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Full text of "[Decisions of the Commissioner for Trademarks] / Commissioner for Trademarks."

I Mill I 



3 0402 00266 9648 



applic.ati_o.Il 
of 
ERA1KERD & ARMJ3TRJDNG C.O.. 

Decided Feb. 9, 1081. 

Recorded Vol, 22, Page 41, 

oOo 

E. N. MARBLE, COMMISSIONER: 

The appeal in this case is dismissed* The decision of* my 

predecessor will not be reviewed or reversed upon the same state 

of facts and the some condition of law. The fact that in the 

consideration of cases mentioned, I have laid down a different 

rule furnishes no ground ?/hatever for moving a reconsideration of 

that decision. 



AZZilC A T I OK 
of 
EMERY BEMI S, JR., 

Decided Feb. 9, 1881. 

Recorded Vol. 22, Page 42. 

oOo 

MARBLE , C OMBO SSI ONER : 

The decision of the Examiner is overruled. I do not 
think that the matter is anticipated by either of the references 
cited, neither do I concur with the views expressed by the Exam- 
iner, that the applicant is inhibited by Section 4959, Revised 
Statutes, from receiving registration for this trade-mark. 



*S APPLICATIOI 

of 
KEPPLER & S C HWARZMANI, 

Decided Ivlay 2, 1881. 

Endorsed or, Attorney's letter . 

oOo 

STOCKBRIDGE, ACTING COMMI SSI ONER: 

The statutes, Section 3, relating to trade-marks, pro- 
vides that it shall "appear to be lawfully used as such by the 
"applicant in foreign commerce or commerce with Indian tribes." 
It is therefore clearly within the power of the Commissioner to 
require applicant to set forth some one or more foreign nation or 
Indian tribes with which the applicant has commercial relations, 
in order that it may be made to appear that such is the fact. 
The decision of the Examiner is affirmed. 












Arfr T. kJk ^ A 7 I I 
bovee & A 12 A II JL *f fh^ry 



•.i2Ma2M^?- 



Decided June 7,1381. 

4fe4 Recorded.* 

O 0o 

MARBLE, C011MI SSI ONER: 

Appeal is taken in this case from the decision of the 
primary examiner refusing to dissolve the interference for the 
reason stated in the motion. 

The motion reads as follows: "I hereby move a dissolu- 
tion of the above entitled interference, and the rejection of the 
"application of Edward Toby, Jr., for registration of the trade- 
mark now in contest, upon the ground that in his letter of April 
"30, 1081, the said Toby admits that he is not entitled to the ex- 
clusive use of said mark, or to any use except as an agent for 
"Bovee and Adams, and that, therefore, he is not entitled to reg- 
istration." 

From the letter referred to and from papers filed in the 
case by Mr. Toby it appears that he was the agent of Bovee and 
Adams in the sale of goods manufactured and prepared by them; that 
he conceived that it would be profitable for said firm to adopt 



Bovee & Adams, Sheet -2- 
some mark by which their goods might be known, and suggested va- 
rious marks and designs, among others the one in controversy; that 
said firm thereupon adopted said trade-mark, manufactured cigar- 
ettes, and placed it thereon, and sent the same to Mr. Toby for 
sale. Mr. Toby also suggested to said firm the registration of 
s?id trade-mark, and authorised its registration by them. 

Bovee and Adams not having registered it as early as 
Toby thought they should, made application for registration there- 
of. 

Subsequently Bovee and Adams applied to register the 
same trade-mark. 

The only question pertinent to the issue between these 
parties, and of importance for decision, is 7:ho is entitled to 
this trade-mark. j?he right to a trade-mark depends upon adoption 
and the acts of the parties in following it up. It matters not by 
whom the trade-mark is suggested, but in order to consitute it a 
legal trade-mark it must possess the character and quality of a 
trade-mark, and it must be adopted and used as such. 

In this case undoubtedly Toby was the first to suggest 
the trade-mark in question, but he was not the first to adopt it. 
and to make it his own trade-mark to distinguish his goods from 
others. 



Eovee <k Adams, Sheet -5- 
On the contrary, Bovee and Adams first adopted and first placed 
it upon their goods to distinguish them from all other goods of 
like character. This "being the case the trade-mark unquestionably 
belongs to them. These facts appear from the admissions of Toby 
himself, and the litigation attended by large expense to both par- 
ties could not establish any different state of facts. 

Mr. Toby under no circumstances with the admissions in 
the papers he has filed in the case, could be allowed to register 
the trade-mark in question. Not being entitled to register the 
trade-mark no benefit can arise to him nor to anybody by allowing 
the contest to proceed. 

The decision of the examiner is therefore overruled, and 
the interference is dissolved. 



A L £ kl £ A T I 1 

of 

LEWIS GII1I1, 

Decided June 29, 1381 . 

Recorded Vol. 22, Page 256 . 

O 0o 

MARBLE, C01MI SSI ONER: 

Applicant seeks to register as his trade-mark the fan- 
cifully selected words "Qpera Puffs." He is rejected upon ref- 
erence to the prior registration of the word "Puff" applied in 
the same class of goods. 

I do not regard the difference between these marks as 
being suf iciently distinctive to impress the ordinary customer. 
The word "Puff" is the prominent part, if not the pith of both 
marks, and bears the same allusive meaning in each. 

The courts have never held that an infringer must copy 
the whole of the plaintiff's trade-mark, being satisfied to dis- 
cover that the characteristic part of the nark has been used upon 
the same class of goods, in such manner as not to lose its origi- 
nal significance. 

The case bears a close resemblance to ex parte Caire (78 
C. D., 131) which held that a proposed registration of the words 



L. Ginter, Sheet -2- 
n The Black Swan" as a trade-mark for gin was anticipated by the 
prior registration of the word "Swan" for the same class of goods. 

Whether the alleged trade-mark be regarded as a compound 
mark, and coming within the doctrine lately reiterated in the' case 
of Strasburger & Co., May 28, 1881, or whether it be regarded as 
merely a colorable variation of the prior registration referred to 
I am of the opinion that the marks in question so nearly resemble 
each other as to be calculated to deceive the public, and that the 
registration should therefore be refused. 

The decision of the examiner is affirmed. 



iZiilCATI OH 
of 

GUSHER IIANOIIllS, 

Decided July 12,1881. 

I 

Recorded Vol. 2231, Page 251 . 

O 0o 

MARBLE , C OMLII G 3 1 ONER I 

Appeal is taken from the decision of the examiner in re- 
jecting the application for registration of applicant of a slip as 
a label bearing upon its face arbitrary and fanciful matter which 
was registered under the act of 1870 as a trade-mark, and is still 
proper subject-matter for registration as such. 

From the papers beforo me, and the references cited, it 
appears that prior to the decision of the Supreme Court of the 
United States that the aet of July 8, 1870, providing for the reg- 
istration of trade-marks, was unconstitutional, it was the prac- 
tice of the office to register labels with the trade-mark of the 
applicant thereon, provided said trade-mark had been duly regis- 
tered. This practice was adopted and followed because thereby the 
government received all the revenues contemplated by law, and it 
was not considered that the law in relation to the registration of 
trade-marks was by so doing violated. 



G. ICvanovitch, Sheet -2- 

Applicant now see&s to register a label which bears up- 
on its face the trade-mark registered under the act of 1870, and 
claims that inasmuch as said trade-mark was properly registered 
under said act, and the fees therefor duly paid to the government, 
that there can be no objection to registering his label with such 
trade-mark thereon, notwithstanding that the act of March 3, 1881 
provides for the registration of trade-marks. 

I cannot agree with the applicant in this claim. 

Applicant may re-register under the present trade-mark 
law his trade-mark without any additional expense, but the law un- 
der which his trade-mark was registered having been declared un- 
constitutional, and therefore invalid, all acts done under it must 
be held to have fallen therewith; and hence, at present he has no 
registration of any trade-mark. 

The office cannot register a label bearing upon its face 
the subject matter of a trade-mark, and the applicant therefore 
stands in the position of having a right to register his trade- 
mark, but without registration. Before the office can allow his 
present application he must re-register his traao-mark, and place 
himself in the same condition that he was under the act of 1870 
before that act was declared unconstitutional. When he was so re- 



G. Evanovitch, Sheet -s- 
registered, I see no objection to allowing him to place said trade 
mark upon his label and have the label registered. By so doing 
the lav/ will be complied with, the government duly protected, and 
his rights secured. 



4> 



APPL.I.C.ATI.0.1 

of 

LER0.Y I.FA I R CH I LD, 

Decided Auk. 10, 186 1, 

Recorded Vol, 22, Page 505 . 

eOo 

MARBLE, COMMISSIONER: 

Appeal is taken in this case from the decision of the Ex- 
aminer of Trade-Marks, who refused to register the word "Eairchild" 
as a trade-mark, because it was "merely the name of the applicant 1 / 

Applicant alleges that the examiner erred in refusing to 
register his alleged trade-mark- First, because the word "Eair- 
child, " has been used as a trade-mark in connection with his manu- 
facture and sale of pens and pencils for twenty years and upwards, 
and is well known to the commercial world as the trade-mark of the 
applicant. Second, because said word was registered as a trade- 
mark in this Office, under the act of July 8, 1870, which Act con- 
tained similar prohibitions to the Act of March 3d., 1881. 

It appears by the records and files of the Office, that 
Mr. Eairchild did register his name, as a trade— mark in this Office 
in July 1879. The proofs at that time submitted, showed that the 
word "Farichild", had been used by applicant as a trade-mark long 



£ .W. Pair child, Sheet -2- 
prior to the passage of the aot of June 1870. T/hile the act of 
1870 in terms prohibited the Commissioner of Patents from register- 
ing, as a trade-mark, merely the name of a person, generally, it 
also contained the following clause, as an exception to the gen- 
eral provisions of the statute. "But this section shall not pre- 
sent the registry of any lawful trade-mark rightfully in use on 
"the 8th day of July 1870." Under this exception to the general 
provision of the statute the word "Fair child" on the proofs pre- 
sented was registered as a trade-mark. The Act of July 1870, and 
all acts and things done under it, have been swept away by the de- 
cision of the Supreme Court, declaring the law unconstitutional 
and therefore void. 

The application as now presented therefore comes before 
the Office the same as if no application had ever been made for 
the registration of the word "Pairchild", excepting, that having 
registered it under the Act of 1870 and paid the fees then requir- 
ed by law to be paid for the registration of marks, the applicant 
is now entitled to re-register without payment of additional fees, 
providing he has a legal trade-mark. 

The Act of March 3rd.,18Gl, provides "That owners of 
trade-marks used in commerce with foreign nations or with the In- 



L.W. Fair ehi Id, Sheet -3- 
"dian tribes, provided such owners shall be domiciled in the Unit- 
ed States or located in any foreign country or tribes which, by 
treaty, convention, or law, affords similar privileges to citizens 
of the United States, may obtain registration of such trade-marks 
by complying with the following requirements:" - Then follows the 
necessary steps to be taken in order to secure registration 

By the 3rd. Section it is provided x x x x "But no al- 
leged trade-marl: shall be registered unless the same appear to be 
lawfully used as such by the applicant in foreign commerce or com- 
merce with Indian tribes, as above mentioned, or is within the 
provision of a treaty, convention, or declaration with a foreign 
power; nor which is merely the name of the applicant: x x x" 

There is no saving clause in the Act, excepting from its 
prohibitions, any particular class of cases as there was in the 
Act of 1870. The Act does not define what shall constitute a le- 
gal trade-mark, but it does declare what shall not be registered 
as such — Among the prohibitions is "merely the name of the applif^ 
cant." It is argued that the word "Fairchild, " by reason of its 
long use on the goods of the applicant to distinguish them from 
others of like character, is not now applicant's name merely, but 
the name of a particular kind of goods. It is undoubtedly true 



L.W.Fairchild, Sheet -4- 
that the goods manufactured by applicant and upon which his name 
is stamped, are known as the Fairehild pens or pencils, as the 
case may be. The name as presented for registration, however, is 
not the name of a pen or pencil but merely the name of the appli- 
cant, unconnected with any sign, nark, or illustration of any hind 
whatever. ^Merely the name of the applicant" means, as I under- 
stand it, the name of the applicant separate and alone. The name 
of one person may be better known in the commercial world than an- 
other by reason of its use and identity with a certain line of bu- 
siness, trade, or class of goods, but the fact does not make it 
registrable as a trade-mark; it is after all the name of the per- 
son merely and not the name of the business, trade, or kind of 
goods. 

While it may be true that the name of the applicant, in 
his trade is of great value, it cannot receive registration in 
this Office, as such, in violation of the prohibition of the stat- 
ute. The prohibition of the statute was to prevent any person 
from using his name in any trade, as a trade-mark, to the exclu- 
sion of other persons of the some name, in the same or any other 
avenues of trade. This intention of Congress would not be carried 



L.W.Fairehild, Sheet -5- 
out if registration was permitted to the name of any person as a 
trade-mark, however long it may have been used. 

The decision of the Examiner of Trade-Marks is affirmed. 



APPLICATION 
Of 
CHARLES A. CLARK, 

Decided Sept. 1, 1381 . 

Recorded Vo l* 22, Page 527. 

MARBLE, COMMISSIONER: 

Applicant' 3 proposed trade-mark consists of the word 
"Sunshine." He is rejected upon reference to the known trade-mark 
consisting of the word "Sun", applied to the same class of goods. 

I agren with the examiner that these marks so nearly re- 
semble each other as to he calculated to impose upon the ordinary 
customer. Two marks may be substantially the scone in respect to 
the impression made upon the public, though different in details 
that would not ordinarily be noticed by the casual observer. It 

is the same general appearance which identifies them in trade. The 

t 

public is not accustomed to attend critically, shades of meaning in 

labels attached to article's of trade, being satisfied to find a 
catch word, idem so nans with the one sought for which may be per- 
haps imperfectly remembered. Thus "Black Swan" was held to be 
anticipated by prior registration of the word "Swan", and "Opera 
Puffs" by the word "Opera." (Ex parte Caire, 15 O.G. 248. Ex par- 
te Lewis Ginter, Vol. 22, MS. Pec. 236.) 



C. A. Claris., Sheet -2- 

So in a recent case the defendant was enjoined from us- 
ing the words "Sarvin's Soluble Blue and Pep;er Box," as being a 
colorable imitation of "Sawyer's Crystal Blue and Safety Box." 

The Courts 3ciy "Placing the labels side by side it is 
easy to distinguish them. But ordinarily persons in the habit of 
buying the complainants bottles would be easily deceived into buy- 
ing the defendants for them." Sawyer v. Kellogg, 12 Reporter, 228, 

I do not think that the word "Sunshine" is sufficiently 
distinctive to warrant its registration, in viev, r of the reference, 
and the examiner's decision is affirmed. 



fls 



AZIlilC A T I N 
Of 
B ASLEY & McA L V A IT A H, 

Decided Sept. 1, 1801 . 

Recorded Vol. 22, Page 551 * 

t oOo 

MARBLE , C OMMI SSI OTTER : 

This is an appeal from the examiner refusing the regis- 
tration of a trade-marX, the essentials of which are the words 
"MacKs jJlTjjj Chocolate." Milk Chocolate is manifestly the name of 
the article, which according to the label, is prepared chocolate 
ready for immediate use upon the addition of water. 

It was held in the case of The Amoslceag Manf. Co. v 
Spear (2 Sands, S.C. 599) that "The owner of an original trade-mar^ 
"has an undoubted right to be protected in the exclusive use of 
"all the marks, forms, or symbols, that were appropriated, as des- 
ignating the true origin or ownership of the article or fabric, to 
"which they are affixed; but haw no right to the exclusive use of 
"any words, letters, figures or symbols which have no relation to 
"the origin or ownership of the goods, but are only meant to indi- 
cate their names or quality. He has no right to appropriate a 
"sign or symbol, which from the nature of the fact it is used to 



2 Basley & McAlvanah, Sheet -2- 
"signify wlwtt others may employ with equal truth; and therefore 
"have an equal right to employ for the same purpose." 

Again in Corwiri v. Daly, (7 Bosw. 222) it was said — "If 
"the trade-mark consists of words, they must indicate ownership and 
"origin, and not merely other attributes, such as quality, kind, 
"texture, composition, utility, destined use, or class of cus tem- 
pers . xxx x The general rule is against apporpriating mere 
"words as a trade-mark." 

In the present case the words "llilk Chocolate", indicate 
the nature or character of the article and nay be employed with 
equal truth by others in connection with chocolate prepared as the 
label indicates the chocolate of these applicants is prepared. 
These words indicate the attributes or composition of the package 
to which they are applied. They are, to that extent descriptive, 
and therefore cannot be monopolized by any one. 

The Examiner has already indicated what may be allowed 
and what can be maintained, as well as what cannot be allowed nor 
maintained. I agree witiiiis opinion as to what may be allowed and 
affirm his decision upon that part which he has refused. 



f~-c- ^-"' ■■ 



of 
L2EE H. G A U S. E __& C. 0.. , 

Decided Sept. 1, 1881 , 

Recorded Vol. 22, Page 518 . 

oOo 

MARBLE, COMMISSIONER: 

Appeal is taken from the action of the primary examiner 
in requiring an erasure of the words "Silver Spoon" from applicant 
proposed label. The label contains the announcement "A silver 
"spoon given away with each pound." It also shows the cut of a 
spoon accompanied by the words "One extra plated tea spoon within". 

Referring to this peculiar method of recommending his 
yeast powder, applicant terms it the "Silver Spoon" Yeast Powder. 
It is to the words "Silver Spoon" in this connection, that the Ex- 
aminer objects, holding that they are used in an arbitrary and 
fanciful manner, and form more properly the subject-matter of a 
trade-mark o 

The words "Silver Spoon", taken by themselves, without 
reference to the other portions of the label, and disassociated 
from applicant's peculiar method of doing business, might" well be 
taken in a fanciful sense by the public, and become by use a com- 



J.H.Gause & Co., Sheet -2- 

meroial signature or trade-mark of the manufacturer. Talcing the 
lebel together, however, it is purely an advertisement of the 
goods to which it is attached, announcing as a special inducement 
to the purchaser that a silver spoon is given away with each pack- 
age. The epithet "Silver Spoon," as applied to Yeast Powder, sums 
up in a word the advantages offered to the public which are more 
fully set forth in the other portions of the label, and is clearly 
used, therefore in a descriptive rather than in a fanciful manner. 
The singularity lies in the manner of doing business and not in 
the terms which correctly describe the scheme. If a dealer 
chooses to inclose in one package such incongruous commodities as 
tea spoons and yeast powder, I see no reason why the label may not 
set forth that fact, nor why either or both commodities may not be 
characterized on the label by an epithet derived from that singu- 
lar practice. The words "Silver Spoon", do not describe any qual- 
ity of the yeast powder, but neither does the statement to which 
the examiner does not object, that "a silver sppon is given away 
with each package." Each of these expressions, however, clearly 
and unmistakably refers to that peculiarity of the package upon 

which the dealer seems chiefly to rely in recomiaending it to the 
public and constitutes, therefore, the proper subject of a label. 

The decision of the Examiner is overruled. 



/3 

A??HCAn Of 

of 

1 H 1 °. J2 SI R.1 SGSRID^RFF, 

Decided Got. 10, 1881 . 

Recorded Vol. 22, Page 581 • 

oOo 

marble, coma SSI ONER : 

The applicant in this case seeks to register the words 
"Corn, Wart, Shin" as a trade-marh for a Corn, Wart and Bunion 
Medicine 

The examiner has refused the registration upon the ground 
that the words are purely descriptive, ana therefore inhibited 
from registration as a lawful trade-mark. 

The question in this, as in all tra-:e-marh cases, is 
whether the words employed will in fact answer the purpose of a 
trado-marh to distinguish in the market ap. 1 leant' s goods from 
similar goods of other manufacturers. If the words employed are 
merely descriptive they cannot scfve this end, since the public 
will understand them as indicative of quality simply, and not as 
pointing to origin or ownership. To purely descriptive words also 
no exclusivoness of right of use can attach, since others with 
equal truth, and consequently with equal right, can use the same. 



T. Egersdorff, Sheet -2- 
As I had occasion to state, however, in the case of ex parte Key- 
man (18 0. Go, 922): "A distinction should be made between words 
"which are the legitimate accepted terms in describing, 'the qual- 
ities, ingredients, or characteristics of an article' and words 
"which are but inferentially or remotely descriptive. In the one 
"case the words will be understood by the public as indicating 
"some peculiarity of the article itself, and not as pointing to 
"origin or ownership; in the other, they will be regarded rather 
"in the light of words fancifully and arbitrarily used, and will 
"consequently serve the ptirpose of a trade-mark. This appears to 
"be the proper test. If the words employed (as the word 'Safety' 
"in connection with gunpowder and the words "System-Renovator 1 in 
"connection with medicines, in the cases cited by the examiner) 
"are so obviously indicative of some peculiarity or quality of the 
"article that the public will be apt to consider them mere descrip- 
tive terms, then it is clear that thuy are nit proper subjects 
"for trade-mark registration, since they can neither indicate orig- 
"in nor ownership, nor can they be the exclusive property of any 
"one. If, however, the descriptive character that might attach to 
"a word is so very remote as to be but secondary, so that the 
"word will be but understood by the public not as a descriptive 



T. Egarsdorff, Ghost -5- 
"but as a fanciful term, it will then accomplish the office of a 
"trade-mark, and to the use of a word which in connection with a 
"particular article is primarily fanciful an exclusive right can 
"exist o indeed, it is common tc find words, either newly coined or 
"arbitrarily selected, the validity of which as trade-marks has 
"been sustained by the courts, which contain a suggestion more or 
"less remote of some peculiarity, real or supposed, of the article 
"to which they are attached. An example of this is afforded in the 
"case of Davis v. Kendall (American Trade-Mark cases, 112), where 
"the term "Painkiller" was held to be a proper trade-mark as applied 
to a medical compound." 

The word,:, employe-' by applicant, disassociated as they 
are from others, would not in my judgment be regarded by the pub- 
lic as merely descriptive, but their primary signification would, 
I think, be a fanciful one, and they would answer to distinguish 
applicant's medicine, and hence serve the purpose of a valid 
trade-mark o 

The decision of the Examiner is reversed. 






AP?liIC ATI ON 
of 
A. C. . PALMER, 

Decided Oct. 11,1801. 

Recorded Vol. 22, Page 583 . 

oOo 

MARBLE , C OMLiI SSI ONER : 

The trade-nark in this case consists of the representa- 
tion of a five cent nickel coin for application to cigars. 

I agree with the Examiner that the marks in the cases 
referred to and that of this applicant are essentially the same, 
and that they come within the decision referred to of Charles A. 
Clark, (Commissioner's decision of Sept. 1, 1881, recorded in Vol. 
22, Page 327); hut I do not find that the particular description 
of goods enumerated "by the owners of the several marks correspond 
with each other. There is no evidence that Lorillard and Co. ever 
applied, or contemplated applying, their mark to cigars. They 
state: "Our trade-mark consists essentially of the arbitrarily se- 
lected word 'Nickel 1 . We have devised this tracie-mark more es- 
pecial y for use on plug tobacco, but propose to use it on any or 
"all of our manufactures of tobacco, as circumstances shall render 
"expedient. YIe may use the word 'Nickel' alone, or with the word 



A. C. Palmer, Sheet -2- 
" ' tobacco' , or with other words, go that it shall read 'Nickel 
" 'Tobacco 1 , 'Nickel Plug', Hi eke 1 Chewing', or the like." 

There is certainly no intimation in this language that 
the mark, is intended to be applied to cigars, nor do I find that 
Link, the other case referred to, contemplated the use of his mark 
in connection with anything other than smoking tobacco. 

The cases referred to do not evince that any other per- 
son, firm, or corporation has the right to use such mark for ci- 
gars, either in the identical form, or in such near resemblance 
thereto as may be calculated to deceive the public. 

While the marks of the several parties are, as before 
stated, substantially identical, this applicant has not appropri- 
ated the same to the part icular description of goods to which Lcr- 
illard & Co. and Link have appropriated their marks. There is/^s^ 
therefore, no danger of causing confusion or mistake in the minds 
of the public, nor of deceiving purchasers. 

The application for registration cannot in the present 
instance bo lawfully refused upon the references cited, and I 
therefore reverse the decision of the Examiner. 



APP LIC AT I Oil 
Of 

£• i. RAMSEY & C. 0.. , 
Decided Oct. 15, 1831 . 

Recorded Vol. 32, Page 589 , 

oOo 

MARBLE, COMMISSI ONER: 

This appeal is taken from the examiner refusing to allow 
the registration as a label of a slip of paper carrying upon its 
face the word "Union" prefixed tc the words "Cylind r Oil." 



The ground of the examiner's refusal is that the word 
"Union" in the connect ion used would be understood by the public 
as a purely arbitrary and fanciful term, and not as a term simply 
descriptive of the particular Kind of oil. 

On behalf of applicant's it is contended that the word 
is used in a purely descriptive sense indicating that the oil on 
which it is placed is produced by the union of several ingredients, 

I am satisfied that the objection of the Examiner is 
properly made. In ray judgment, the primary signification which 
the public would attach to the word would be a fanciful one, and 
that it would not be generally understood as a dimply descriptive 
term, and it is this primary signification of a word which should 



J. S. Ramsey & Co., Sheet -2- 
det ermine. 

The authorities relied upon by the examiner are clearly 
in point and his decision is accordingly affirmed. 



APPLICATION 

ot 

i'IA!) i oh & 120MP SOL 

Decided Oct. 25, 1881 . 

Recorded Vol, 22, Page 405, 

oOo 

MARBLE, C OMMI SSI ONER : 

Appeal is taken in this case from the decision of the 
examiner of Trade-Marks, requiring applicants to specify more par- 
ticularly the class of goods upon which their trade-mark is to be 
used. 

The statute provides that a party may have his trade- 
mark registered by complying with the various requirements there- 
in mentioned, among which arc the folluwing: First, By causing to 
"be record d in the Patent Office a statement specifying name, dom- 
icile, location and citizenship of the party. applying; the class 
"of merchandise and th cparticular description of goods comprised 
" in such class to which the particular trade-mark is to be appro - 
priated ." x x x x 

In their petition applicants say: "The class of merchan- 
"dise to which this trade-mark is appropriated is druggist's sup- 
plies, and the particular description of good- comprised in such 



S. Maw, Son & Thompson, Sheet -2- 
" class on which we use the trade-mark: are Surgeon's instruments 
"and appliances, hair, tooth and nail brushes, feeding bottles and 
"Druggists' sundries of all kinds." 

There is no objection on the part of the examiner to the 
description of the particular class of goods upon which said trade 
mark is to be used except what is supposed or intended to be com- 
prised in the words "Druggists' sundries". This he holds is not 
a description of any particular goods kept for sale by druggists. 

In this decision I think ho is correct. Webster defines 
the word Sundries as follows: "Many different or small things, 
sundry things. " 

The word sundries is one which has a very general appli- 
cation, and when it is used in connection with druggists' goods 
there is nothing connected with the meaning of the word which in- 
dicates any particular class or description of goods. The statute 
requires that the applicant shall state the class of merchandise, 
and the particular description of goods comprised in such class to 
which the trade-mark is to be applied. 

Upon inquiry I am unable to find that any particular 
class of goods in drug stores can be said to be druggists' sundries ; 
on the contrary, the word applies as well to one kind of articles 



S. Maw, Son & Thompson, Sheet -3- 
kept in such stores as another except drpgs, medicines and paints. 
In other words: it signifies no particular class of goods. Such 
being the case I think the applicants should be required to speci- 
fy the kind of goods, in accordance with the terms of the statute, 
upon which they desire to use their trade-mark. 

The decision of the Examiner is affirmed. 



I ■ 



APPLIC.ATI.01 

of 

U E L V I H B. C H U R C 



H ^ 



Decided Nov. 21, 1801 . 

Not Recorded, 

0O0 

MARBLE, COMMISSI OUTER: 

The examiner of trade-mar&s requests instruct ions in 
relation to the application filed by Melvin B. Church for the reg- 
istration of the word "Alabastine" as a trade-iaarfc. 

It appears from bhe papers transmitted that, on December 
23, 1878 the Alabastine Company, a firm doing business at Grand 
Rapids, Michigan, filed in this office an application for the reg- 
istration of the above mentioned trade-marK by Melvin B. Church, 
its manager, and that at divers and sundry times since that date 
up to and including April 7, 1881, other papers were filed uy said 
manager in the case, all of them showing that said Company claimed 
to be the owner of said trade-mark. 

On September 24, 1881 Melvin B. Church filed an applica- 
tion in the office for the registration of the word "Alabastine", 
claiming the same as his trade-mark. 

In a paper filed October 19, 1881, applicant Church, by 



\ 

M.B. Church, Sheet -2- 
his attorney Ellis Spear, states that, "he has become successor 
"and sole owner of the patents and other property of the said Ala- 
"bastine Company, and sole owner of the trade -ma rK 'Alabastiiie ' 
"applied to the goods made by the said Company, and now made by 
"him. He has filed amended papers in accordance with the facts 
"heroin set forth, and hereby requests that these papers may be 
"substituted for and in place of the original and all amended pa- 
"pers to the original application, and that his name may be sub- 
stituted for for that of the Company named in the original appli- 
cation, to the end that the certificate may issue to him as the 
"sole owner, and sole rightful user of the trade-marh. " 

Mr. Church claims to be the successor and sole owner of 
the trade-mark "Alabastine," but it does not appear from the re- 
cords of this office that any paper has been filed shOY/ing a trans- 
fer of the right of said company to said company to him. 

The papers filed in the case by Mr. Church as the mana- 
ger of said company show that said company adopted said trade-mark 
and continued to use it for several years. 

It may be true that Mr. Church is how tiie owner of said 
trade-marlc, and as such should receive a certificate of registra- 
tion therefor, but before such certificate issues to him he must 



M.B. Church, Sheet -3- 
make it appear that he is the legal owner thereof. His simple as- 
sertion in a paper filed by him, hat he is the successor and sole 
owner of said trade-mark is not sufficient. The title to property 
of this kind cannot pass except by some instrument of writing con- 
veying the some. When such instrument is filed, showing that he 
is the successor and sole owner. of this trade-mark, he may be rec- 
ognized as such, and if the word is registrable as a trade-mark, 
certificate may issue to him there: for. 



"a 



i£? LI CAT I Oil 

of 

niHIIG & WjDRKUM, 



Decided Dec. 15, 108 



Recorded Vol. 32, Page 494 . 

O0o -j^., 

STOCKBRIDGE, ACTIHG COMMISSIONER: 

This appeal is taken from the Examiner's rejection on 
reference to the trade-BiarX.of J. if. O'Donnell, ^8497, registered 
July 19, 1881. 

I find on exainintion of the records of this office that 
both these trade-marlvs were formerly registered under the act of 
1870, the present applicant being the earlier registrant by some 
three years, and that the two have not beer, regarded by the two 
parties themselves or by the office as conflicting. 

It is somewhat doubtful in my mind whether any person 
can claim the exclusive right to use the letters "O.K." unaccom- 
panied by other arbitrary or fanciful matter as a trade-mark for 
his merchandise. This uncouth abbreviation, though undoubtedly 
at one time fanciful, has become by long use in America, at least, 
a descriptive term indicative of excellence quite as much as the 
terms "Superior," "Extra" and many others, and it is therefore 



Freiberg & Workun, Sheet -2- 
doubtful whether all persons have not equal right to its use, 

In view of this doubt, and of the faot that the applicant 
only claims this matter in connection with other matter, which is 
clearly fanciful, and in consideration of the history of the two 
cases in this office, and of the possible jeopardy in which valua- 
ble interests might be involved by a refusal to register, I thirifc 
the case as presented should be allowed, and therefore reverse the 
examiner. 



i££ L I C A T I N 
of 
H I IT R Y _L. P I. E R C E, 

Decided Jan. 4, 1882 . 

Recorded Vol. 23 , Page 16 . 

oOo 

STOCKBRIDGE, ACTING COMMISSIONER: 

The examiner holds generally that applicants • label con- 
tains no element properly registrable as a trade - mark. 

Applicant describes the essential portion of his mark as 
follows: "the words W. Baker & Co ' s Chocolate Double Vanilla, 
Dorchester, Mass. , together with the figures arranged and colored 
as above described." 

It is conceded that the descriptive portion of applicant's 
label, viz: the words W. Baker and Co's Chocolate Double Vanilla, 
Dorchester, Mass., are not by .themselves proper subject -matter of 
a trade-mark registration. 

The obverse and reverse of applicants medal displayed 
on the opposite ends of a colored ribbon, separately or together, 
form a valid trade-mark. 

The other features of applicant's label, such as the 
scroll work and colored back grounds, I should regard rather as an 



H. L. Pieroe, Sheet -2- 
ornamental design for displaying the applicant's advertisement 
than as a trade-mar h indicating the origin and ownership. 

If the applicant, however, is satisfied that these fea- 
tures form an essential portion of his mark, and makes oath to 
that effect, I see no objection to his covering in registration 
the various pictorial features of his label which are clearly of 
a fanciful and arbitrary nature. This will limit rather than en- 
large his registration. 

With reference to the descriptive matter, however, the 
doctrine is now well settled in the office, that descriptive words 
cannot be included in a recital of the essential portion of a 
trade-mark. (Ex parte Farnham & Co., 18 O.G.,412; Adriance, Piatt 
& Co. ,20 O.S., 1020. ) 

I do not see that the words referred to lodse any of 
their significance by virtue of the arbitrary lines and figures by 
which they are surrounded, or that they would be regarded by the 
public as anything more than an advertisement of the goods offered 
for sale. 

The examiner in the further treatment of the case will 
be guided by the views herein expressed. 



VQi- 



W A P P L £ C. A T I. 0. N 

Of 
£• I- R A M j3 A Y & C 0. . , 

Decided Iter oh 16,1882 . 

Recorded Vol. 25, Page 81 . 

O 0o 

MARBLE , C OMMI SSI ONER I 

This case, slightly changed, was before me on October 
15, 1881. At that time the application to register the label was 
refused because the word "Union" thereon was the proper subject- 
matter of a trade-mark. Applicants have now interlined the words 
"Non-corrosive." This does not change the nature of the case, or 
make it any more the subject of registration as a label than be- 
fore. 

The decision of the examiner rejecting the registration 
is affirmed. 



of 

JONAS BR.0_.GK & B R j3 j3. , 

Decided Jan. 0. 1G82 . 

Recorded Vol. 25, Page 21 . 

O 0o 

STOCKBRIDGE, ACTING COMMISSIONER: 

The trade-mark in this case consists of the figures and 
words 1851, London, 1862, 1855, Paris, 18G7. 

The Examiner objects to the proposed trade-mark as being 
geographical and descriptive. 

The words London and Paris, however, cannot be considered 
as descriptive of the place where the goods are manufactured, but 
as descriptive; of medals, of which applicants enjoy the exclusive 
possession. Even if other exhibitors have obtained the same col- 
lection of medals from the various fairs referred to, as appli- 
cants, there yet remains to the applicants the arbitrary arrange- 
ment of these words and figures, which, amounts in my opinion to a 
registrable trade-mark. 

The decision of the Examiner is reversed. 



3 



A±LLklCAHO.E 
of 

I'C. CRAWFORD & J-_JG_ CRAn£il> 

Decided April 29,1882 . 

Recorded Vol. 25, Page 122 . 

oOo 

MARBLE, C OMMI S SI ONER : 

Appeal is taken in this case from the decision of the 
examiner refusing to register applicant's alleged trade-mark. The 
reason why registration is refused is because of the supposed sim- 
ilGTity between applicant's trade-marl; and that oT B. T. Babbitt. 

Undoubtedly where two trade-marks are so similar as to 
mislead and misguide the purchaser in buying a different article 
from that he supposed he was buying, registration should be re- 
fused. Where, however, the trademark as applied to the goods, al- 
though the characters may, the same or similar, is so different 
that no one could be deceived or misguided in the purchase, regis- 
tration should not be refused. Such is the case here. While it 
is true that both Babbitt and the Crawfortjs use a five-pointed 
star, yet the use of that star is so different that no person of 
any intelligence whatever, in my opinion, would be influenced to 
buy Crawford's Baking Powder in place of Babbitt's Yeast, by rea- 



Crawford & Crawford, Sheet -2- 
son of the similarity in the mar&s. 

The decision of the examiner is therefore overruled, and 
registration of the mark allowed. 






£^-. 



APPLICATIOH 
of 

HENRY H. RICE, 

Decided. July 10.1883 . 

Recorded Vol. 25. Page I88 

0O0 

MARBLE, COHMI SSI ONER : 

Appeal Is taken in this case from the decision of the 
examiner refusing the application to register a label having on 
it the words "Elect ic Liniment", because the word Elect io is ar- 
bitrary and fanciful and not descriptive. 

I think the examiner errs in this conclusion. The word 
Electic has by its use a well defined meaning; that meaning it is 
sought here to give as descriptive of a liniment. I fully agree 
with the examiner and the authorities cited by him that where a 
word has not such descriptive meaning, but is simply arbitrary and 

Y\jt/i 

fanciful it should be registered upon a label; but where words 
have a well defined meaning by common use, and are used in a de- 
scriptive sense and not in a fanficul and arbitrary sense, I think 
they may be put upon labels. 

The decision of the examiner is overruled, and registra- 
tion will be allowed. 



I Ls a P P L 1 C. A T 1 0. H 

of 

LUIlIlS BROTHERS^ 

Decided Auk. 19, 18GS . 

Recor ded V o l. 25, Page 244 . 

oOo 

STOCKBRIDGE, ACTING COMMISSIONER: 

This appeal is taken from the refusal of the examiner to 
allow the registration of the word "Sepeial" as a trade-marl; for 
wines. 

The examiner refused the alleged trade-mark on the 
ground that it presented nothing of a sufficiently arbitrary and 
marked character to amount to a lawful trade-mark, it being held 
that the so-called word symbol is used in a descriptive rather 
than an arbitrary sense. I agree with the examiner that the word 
"Special", as applied to vines and liqours, is indicative of grade 
and in this sense is descriptive in the same way that "A 1" and 
"X X tt would be. 

The decision is affirmed. 



APZHC AT I °I 
Of 
HOMER & MARKETER, 

Decided Sept. 25,1882 . 

Recorded Vol. 25, Page 277 . 

O 0o 

MARBLE, COMMISSIONER: 

Appeal 'is taken from the decision of the examiner reject- 
ing the application for registration for the Trade-Hark therein 
described. 

The examiner rejected the applicationjbecause he under- 
stood that the island, on which the peaches are grown to which the 
trade-mark is to he attached, was near the main-land, and hence 
that the owners of the island did not have the right to the exclu- 
sive use of its name, parties living on the main-land having given 
the same name to their peaches. 

An examination of the maj shows that the island is dis- 
tant from the main-land at least one mile, and it also appears 
that the applicants for registration of the tra e-mark own the en- 
tire island, except a small portion of it which is used for a 
light -house. 

I do not think that this case comes under the objection 



HOmer & Masheter, Sheet -2- 
of a geographical name, "because it is simply the name of the par- 
ties 1 property, li&e a person's residence or farm which he gives a 
peculiar name. 

Under the facts as now ascertained I think the rejection 
was unwarranted, and therefore overrule the decision of the exam- 
iner, and direct that the registration be allowed. 



APPLICATION 
of 
C OFF IIj ALT EMUS & C. 0. , 

Decided I.larch 10,1882 . 

Re gorged Vol. 25, Pane 49 . 

oOo 

STOCKBRIDGE, ACTING COMMISSIONER: 

Applicants proposed trade-mark consists of the word 
"Washington" as applied to the class o£ goods known as Cotton 
Prints. This word is associated on applicants label with the pic- 
ture of General Washington, and applicants contend that the word 
is thus deprived of its geographical signification. 

I see no objection in this view to the registration of 
the word accompanied by a representation of General Washington, or 
if, as the applicants represent, the and the picture are in- 
tcr changeable, I do not see why the registration of the picture by 
itself would not afford ful] protection. The word ••Washington" 
standing by itself is objectionable as having a geographical mean- 
ing, and this objection is not obviated by the fact that it is al- 
so the name of a historical character. (See ex parte Oliver, 18 0. 
G.,923). 

The decision of theexaininer is affirmed. 



u 






AZZHCAnoK 
of 

LAWREITC.E Hlilll; 



Decided Oct. IS. 1882 . 

Recorded Vol. 25, Page 296, 

oOo 

MARBLE , C OMMI G S 1 01JER : 

The examiner refused to allow these applications for the 
reason that the symbols contained therein amounted to trade-marks. 

This doctrine has heretofore bee:: accepted as correct by 
the Office, but in the case of the U. S. Ex. Rel. The Wilcox and 
Gibbs Sewing Machine Co. v. E. II. Marble, Vol. 10, Page 267, Wash- 
ington Law Reporter, the Supreme Court of the District of Columbia 
announce a different view of the law. They hold that the present 
statute relating to Labels does not give the Commissioner power to 
exclude from registry an alleged label on the ground that it is a 
trade-mark. 

Adopting the interpretation of the statute given by the 
court, the decision of the examiner must be reversed and registra- 
tion allowed. 






A£P LI C ATI 01 
of 
C OF P I R, AL T E JJU S & _C_0 . , 



Decided Deo. 29, 1882. 

Recorded Vol. 25, Page 417 . 

oOo 

MARBLE, COICII SSI ONER : 

This case was decided by the Acting Commissioner on the 
10th of last Ilarch, and now comes up on a motion for a reconsider- 
ation. 

Applicants 1 proposed trade-marK. consists of the word 
"Washington" as applied to the class of goods Known as "Cotton 
Prints." 

In the former decision it was said that the word "Y/ash- 
ington" standing "by itself is objectionable as having a geographi- 
cal meaning, and that this objection is not obviated by the fact 
that it is also the name of a historical character." 

It is true, as a general rule, that words having a geo- 
graphical meaning cannot be registered as Trade-Harks, but this is 
where the word is descriptive of the article, or suggestive of the 
locality from which it comes. 



Coffin, Altemus & Co., Sheet -2- 

If, however, the word is fancifully and arbitrarily ap- 
plied, and is not a deceptive term, then it constitutes a proper 
subject for a Trade-Mark. See Lewis N. Green, CD. 1075, p. 121; 
Cornwall & Eros., CD. 1877, p. 85; and J. G. Knapp,CD. p. 143. 

Applying these principles to this case, I think the word 
"Washington 1 * can be legally registered as a trade-marl: to cotton 
print goods. 

It is well known that Washington is not a manufacturing 
city, and I do not think the public, on account of the name, would 
be led to believe that the goods were produced here, nor would 
they be likely to regard any quality which the goods may have, as 
indicated by the name. The selection seems to be purely fanciful 
and arbitrary, and devoid of objection. 

The decision of the Acting Commissioner is, therefore, 
set aside, and that of the examiner reversed. 



I r A 2 £ k I SL A 1 I o n 

of 
S IMOOS M AN UFACTURING C. 0.. , 

Decided Jan. 22, 1885 . 

Rec orded Vol, 25, Page 472. 

0o 

MARBLE, COMMISSIONER: 

In this case the examiner rejected the application be- 
cause the word "Spe cial " as a trade-mar};, was descriptive, and 
hence, under the ruling of the office could not he registered. 

Y/here a word is descriptive it is not registrable, hut 
I am unable to see how the word "Special" is descriptive of any 
character, quality, or grade of any article of merchandise or com- 
modity,, It is true, as suggested by the examiner, that manufac- 
turers may use it to designate some particular article or commodity 
manufactured and placed on sale by them, but this does not give it 
a descriptive character. There is no definition of the word which. 
either by analogy or otherwise, makes it descriptive or indicative 
of grade or quality. 

In the case cited, ex parte Luyties, the acting Commis- 
sioned held that the word "Special" when applied to wines was de- 
scriptive of the grade of wine. I am unable to concur in the 



Simonds Manufacturing Co., Sheet -2- 

view expressed in said decision. Words of general use should be 

given the meaning they ordinarily have, and the ?rord "special" as 

defined by Webster moans - particular, peculiar, different from 

others, extraordinary, uncommon, &©. 

The use of the vrord "Special" on the saws manufactured 

any 
by said firm certainly does not make it descriptive of quality 

in the saws, but simply designates the saws of this particular 
company, and for that purpose answers all the requirements of a 
trade-marR, and nothing else. 

The decision of the examiner is overruled, and regis- 
tration allowed. 



AZZIiIC A T I OK 
' ' Of 

W M. |. H OPER & SONS, 

Decided liar oh 29,1885 . 

Recorded Vol. 24, Page 124. 

oOo 

MARBLE, COMMISSIONER: 

Appeal is taken from the refusal of the examiner to reg- 
ister the word "Woodberry" as a trade-mark for cotton duck. The 
examiner bases his action upon the fact that the word is the name 
of a village in the vicinity of Baltimore, where the cotton manu- 
facture is extensively carried on f and that the word, therefore, 
as applied to cotton due-', must beconsidered as descriptive in its 
proposed application.. 

The applicants have already been permitted to register 
the word v/oodberry for cotton duck as one of the elements of a 
fanciful trade-mark. (See registration Nos. 9,705 and 9,804.) 
They now propose to register the word Woodberry alone. 

It does not air ear from the records of this case whether 
the applicants' goods are manufactured at Woodberry. It is admit- 
ted by the applicants that there is a village of that name in the 
vicinity of Baltimore, and that several manufactories engaged in 



Hooper & Sons, Sheet -2- 
the production of cotton goods arc located there. They state in 
their application that their principal office is in Baltimore, and 
that their goods are manufactured in the county of Baltimore and 
elsewhere in the State of Maryland. 

In view of the fact that Y/oodberry is the name of a well 
known manufacturing vil.age it is unimportant whether the appli- 
cants' business is located there or elsewhere. In one case the 
use of the mark would be descriptive of the goods in the sense 
that it would indicate the place where they are manufactured; and 
in the other case, it would be calculated tc convey a wrong im- 
pression that goods came from Wo:dbe::ry which were in point of 
fact manufactured elsewhere. 

The doctrine that geographical names indicating districts 
of country or Manufacturing places can ot become lawful trade- 
marks in the hands of any particular user was finally established 
by the Supreme Court in the case of the Canal Company v. Clark )13 
Wall., 311) upon. full consideration. In reaching this conclu- 
sion the court examined the various cases which had boon supposed 
to establish the doctrine that geographical names might be ap- 
propriated by the first user, and concluded that in no instance 
had this doctrine been applied to the facts in the case. 



Hooper & Sons, Sheet -3- 

The word Woodberry must be classed I think with the 
words "Lackawana", "Durham", "Lloline", and "Glendon", which have 
all "been declared to "be invalid trade-marks „ 

The decision of the examiner is affirmed. 



AZZilC AT I OH 
of 

LI- IAMI1 &__ c o. , 
Decided April 4, 1805 . 

Recorded Vol, 24, Page 15 1. 

O 0o 

MARBLE , C OMMI G S 1 OTTER : 

Appeal is taken from the refusal of the examiner to reg- 
ister the word "Tha psine " as a trade-mark for medicinal plasters. 
The proposed registration is objected to on the ground, that the 
mark is calculated to deceive the purchasing public from its near 
resemblance when enunciated to the word"Capcine", a widely known 
trade-mark for the same class of goods; and, also, for the reason 
that the word is a derivative form of the word "Thapsia", the name 
of a tropical plant which is largely used in the composition of 
medicinal plasters. 

I think, the first objection is well taken. While the 
two words present certain differences to the eye, they closely re- 
semble each other when enunciated, and are calculated to create 
confusion in the sale of this class of goods. The identity of 
two trade-marks depends upon the probability of their being mis- 
taken for each other by the ordinary purchaser. It is not diffi- 
cult to introduce colorable alterations into known and valuable 



L. W. Warner, Sheet -2- 
trade-marks, which are discoverable upon comparison and close ex- 
amination. The courts uniformly hold, however, that if the marks 
produce substantially the some effect upon the eye and ear, and 
are calculated to impose upon the ordinary customer, the marks are 
for all practical purposes identical. 

Thus, the complainant having a trade-mark in the word 
"Royal", the defendants were enjoined from using the word "Loyal" 
upon the same class of goods. (Royal Baking Powder Co. v. 
McQuade, Cox Trade-Mark Manual, No. 671.) So, where the complain- 
ant being the original inventor and manufacturer of Perry Davis 
Pain Killer, the defendant was enjoined from making and selling 
another article as Perry's Vegetable Pain Killer. ( Ibid . 1C5. ) 

Where the complainant has been selling Blueing under the 
general designation of Sawyer's Crystal Blue and Safety Box, the 
defendant was enjoined from putting up bottles of Blueing with the 
title of Sawins Soluble Blue and Pepper Box. (Sawyer v. Kellogg, 
7 Fed. Rep., 720). 

It is well established that the effect upon the ear as 
well as upon the eye is to be considered in judging of the resem- 
blance of two marks. Thus, an application for the registration 
of the word "Star" was refused on the ground that a device repre- 



L. W. Warner, Sheet -5- 
senting a star had already been registered in another name for 
use upon the same class of goods, the evident reason of this re- 
jection being that while the marks were different to the eye they 
would both pass by the same name. (In re American Lubricating 
Oil Co., 9 0. G., GOV). So, an alternative trade-mark consisting 
either of the figure of a lion or the word "lion" was admitted for 
registration in the same application on the ground that they were 
different forms of the some mart. (Cox Trade-Hark Manual, 501), 

I think that the words "Thapsine" and"Capsine" used as 
designations of the same article would be liable to deceive the 
ordinary purchaser, and for that reason the registration must be 
refused. 

The decision is affirmed. 



ft 






A Z Z i I C A T 1 K 

of 

J . E. £ 0. R B E S & C.£.> 

Decided Hay S, 1885. 

Record ed Vol. 24, Page 255. 

oOo 

MARBLE , C OMLII G S I ONER : 

Applicants seek to register the words "Prize Baker" as 

a trade-marl; for stoves. The examiner refused the registration 

for the reason "that the words are vised descriptively and in their 

ordinary sense." 

In this conclusion I am unable to agree. Words selected J 

as trade-marks for particular kinds of -roods usually have some 

/ 
relevancy to such goods. , It does not follow in this case that 

because the word "Prize" is used that a prize has been awarded on 

this stove, and when combine 1 with the v;ord"Baker" it does not add 

anything to the usual signification given to it. The combination 

of these words I think comes clearly within the true definition of 

a trade-mark for the kind of goods upon which they are used, and I 

must, therefore, overrule the decision of the examiner, and direct 

that registration be allowed. 



of 
BARBOUR & HAMILTOII, 

Decided Aug. V, 1005. 

Re corded Vol* 24, Page 424 . 

oOo 

MARBLE , C 0I.CII SSI ONER : 

The applicants declare that the essential features of 
their trade-mark is the figure of the rising sun and its rays in 
connection with the ears of corn, the sheaves of wheat and the 
word cereal. 

The examiner refuses registration so far as the word 
cerea l is concerned, on account of its close resemblance to the 
trade-mark Ceres for the same goods. A comparison of this trade- 
mark, however, with the Ceres trade-mark, shows great difference. 

While upon the ceres trade-mar]; there are sheaves of 
wheat, they arc differently disposed and there is no figure of the 
rising sun with its rays; there are no ears of corn. 

I do not think that the word cereal could readily he 
mistaken for ceres, by the general public, and besides this the 
trade-mark is to be taken as an entirety. 

In his answer, and for the first time, the Examiner 



raises the objection that the word Cereal is an ordinary, descrip- 
tive term, used in the trade to designate all cereal products - 
flour as well as grain. If this were so, the objection should 
have been made before, for it goes directly to the merits of the 
case and the applicants should have had the opportunity to meet 
it; it also raises an independent issue, adverse decision upon 
which to the applicants would make the decision of the other 
question, a far less important one, unnecessary. 

But I do not think that the term can be held descriptive 
here. It is certainly no more so than Ceres. The word Cereal, 
in one sense, is merely the adjective of ceres. As a noun it 
means any edible grain. 

The decision o ' the examiner is reversed. 



// 



AZZIiIC AT I OH 

of 

A. G. illHIGS & S 0. N S, 



Decided Cot. 11. 1805. 

R e corded Vol. 25, Page 67. 

oOo 

MARBLE , C 01C LI S SI OKER : 

Appeal is taken from the refusal of the examiner of 
tra do-marks to register applicants 1 representation of a hair net 
on an oval figure, as a trade-marl;. 

The reason assigned by the examiner why such figure 
should not he registered as a trade-marls is, that it is simply a 
representation of the goods on which it is to he used. 

It does not appear that such figure or representation 
has heretofore been used by any other party or parties as a trade- 
mark, and it has been selected by applicants to be used upon boxes 
packages, or cards containing or bearing hair nets. While it is 
true that it is suggestive of the goods to be sold, I do not think 
that is a good objection for not registering it, nor do I think 
that because others have sold hair nets on card-boards cut in an 
oval shape such fact should be considered as an objection to the 
registration of this figure as a trade-mark. Parties have the 



Jennings & Sons, Sheet -2- 
right to select either natural objects or objects created, not 
indecent, as their trade-marks, and to use them as such. This 
is all that applicants have done, and if their claim be limited 
to the figure as represented, I see no objection to its registra- 
tion. 

The decision of the examiner is therefore overruled. 



AZZIIC a T i j)_N 

of 

IliLIAM H.RAI L _T £ IT, 

Decided Feb. 14, 1884 . 

Record ed Vol . 25, Page 521 . 

O 0o 

BUTTERWORTH, C OMMI SSI ONER : 

It is sought to register as a trade-mark for table 

sauces, pickles, &c. the words "Chili Colorow", in other words red 

w 
pepper, for it is abundantly shown that the words "Chili Colorow" 

are but Spanish, though perhaps provincial Spanish, for red peper- 

Red pepper sauce, red pepper pickles: 

In the Supreme Court case of the Delaware and Hudson Ca- 
nal Co. v. Clark, 1 O.G., 279, it is said "No one can claim pro- 
jection for the exclusive use of a trade-mark or trade name which 
"would practically give him a monopoly in the sale of any goods 
"other than those produced or made by himself. If he could the 
"would be injured rethcr than protected, for competition would be 
"destroyed. " 

Now applying this to the case before us, "Chili Colorow 
Sauce" produced by some one else might be a very different sauce 
from that produced by the applicant, yet, if permitted, he would 



¥. H. Rail ton, Sheet -2- 
monopilize all. ■ 

In the ease of the Delaware and Hudson Canal Co. v. 
Clark, the court says further: "Nor can a generic name, or a name 
"merely descriptive of an article of trade, of its qualities, in- 
" gradients, or characteristics , be employed as a trade-mark, and 
"the exclusive use of it he entitled to legal protection." 

As said by Judge Folger in the case of Caswell v. Davis, 
Cox, Manual of Trade-Marks, 289, no principle in the lav; of trade- 
marks is more firmly settled than that the words or phrases which 
have been in common use, and which indicate the character, kind, 
quality, or composition of a thing may not be appropriated by any 
one to his exclusive use, known words and phrases indicative of 
quality or composition being the common property of all mankind. 
They cannot be appropriated by any to mark an article of his man- 
ufacture, when they may be truthfully used by another to inform 
the public of the characteristic of an article made by him. nor 
does it matter that the form of words or phrases adopted indicates 
the origin and maker of the article, or that the words are coupled 
with arbitrary symbols. 

The characteristic of the applicant's production, of his 
sauces, pickles, &©,., that which gives it its peculairity, its 



W. H. Railston, Sheet -3- 
re cognizable, and perhaps distinguishing piquancy, is, undoubtedly 
red pepper,- that is "Chili Colorow." 

If the characteristic of the product were not red pepper 
the words "Chili Colorow", though none the less descriptive words, 
would have the additional ' objection of being misleading. 

The decision of the examiner is affirmed. 



\a 



is a nnsiiATi 01 

of 

TUB E-M A R K j3 _& LABEL 5. 

Decided April 21. 1884 . 

Recorded Vol , 25, Page 44C. 

oOo 

BUTTERvVORTH, COMMI SSI ONER: 

In response to your question as to whether you are au- 
thorized and required to 'receive for registration and register a 
trade-mark as a label upon the payment of the fee prescribed for 
the latter, I answer no. I can find no trace or authority which 
authorizes such action .by this office. The difference between a 
label and a trade-mark is palpable and well-defined in the law, and 
the statute - section 5 of the act of 1874- expressly provides 
that, "there shall be paid for recording the title of any print or 
"label, not a tr ado-mark , six dollars"; while section 4957 of 
clause 2 of the act of 1881, provides that registration of a trade 
mark may be had "by making payment of the fee of twenty-five dol- 
lars." 

How, who shall determine whether the application pre- 
sented for registration is a trade-mark or a label,- the applicant 
or the Commissioner of Patents? To say that the applicant shall 



Registration, Trade-Marks & Labels, Sheet -2- 
det ermine it, is to say that the question is not whether the ap- 
plicant really presents a trade-marls: for registration, but whether 
he is pleased to call it a trade-mark, without reference to its 
actual character. This involves an absurdity. 

You will determine in each case whether that which is 
presented for registration is in fact under the law a label or a 
trade -marie. If it is the latter, it will in no case be registered 
except upon the payment of the fee fixed by law, tc r "it: twenty- 
five dollars. 



j-'y At.* '- i ■■-■'- '* ' '"' 

APPLI.C.ATI.J01 
Of 

JAM E_S ARMSTRONG & CO . , 

Decided Sept. 19 . 1684 . 

Recorded Vol. 26. Page 260. 

oOo 

DYRENFORIH, ACTIITG COMMISSIONER: 

The Examiner states the matter involved in this appeal 
as follows: 

"There is in this case no question of validity of the 
trade-mark presented or of the propriety of its registration. Ap- 
peal is taken from the Examiner's requirement that certain matter 
not necessary to a description of the trade-mark, or of the fac- 
simile which is presented, and not shown in the fac-simile on file 
should bo canceled. 

The trade-mark consists of a monogram formed of the let- 
ters and character J. A. & Co. enclosed within a circle. It would 
be sufficient for the purposes of the law if nothing else were 
shown and described, and in some respects this practice would be 
advantageous to the registrant. It has been customary, however, 
and to this there can be no objection, to present trade-marks on 
one of the actual printed labels upon which applicant is accustomed 



J. A. Armstrong & Co., Sheet -2- 
to display them in actual use, and describe them as so -pY%¥&&&, 
Whatever convenience or advantage there may be in this practice 
otherwise, it enables applicant to set forth in a clear way his 
method of attaching his trade-inarX to his merchandise, which is 
one cf the statutory requirements. Sec. 1, Act of :.Iarch 3, 1881, 
Par. First . 

To comply with this and other statutory requirements and 
the formal requirements of the office, in many cases of great im- 
portance, the office, immediately on the enactment of the law, is- 
sued a set of rules and forms which are substantially the scone as 
those now in use. These are intended to set forth Just what is 
necessary to secure the protection of the lav;, and to facilitate 
the business of the office as well as of the applicants. Slight 
changes have been made in them at one time and another, and other 
changes may be made in the future as experience shall determine. 
These forms are not absolutely insisted upon, because when the 
statutory requirements are obeyed the office does not propose to 
insist upon mere matters of form; and at the same time t may be 
said that no forms can be drawn that are adapted to all cases; 
nevertheless they are fully adapted to the present case, and no 
advantage is seen to accrue to applicant by departing from them. 



J. A. Armstrong & Co., Sheet -3- 

The office requires, then, in a formal statement, 1st, a 
description of the trade-mark. This must practically he a de- 
scription 6f the fac simile on file, which, like the drawing in 
application for patent, is presented to supplement and form a part 
of the specification. This discripticn must also discriminate be- 
tween the essential and unessential features, an important matter 
where the label presents many and complex elements, 

2nd. A statement of the class of merchandise and the par 
ticular goods comprised in such class on which the trade-mark is 
used. This is necessary for the information of the public, and 
for future reference. 

3rd. A statement showing ho?/ the mark has been applied 
to the goods. 

4th. A statement showing how long the trade-mark has 
been used. 

The form on page 3 of the Trade-Mark Rules has been 
carefully drawn to cover all these points; work is facilitated 
when applicants follow it as closely as possible, and hindered 
often just in the degree in which they depart from it. 

in the present case applicant begins at the top of the 
page 2 with the usual description of his fac simile. The 2nd. 



J. A. Armstrong & Co., Sheet -4- 
paragraph on that page appears to be devoted to setting forth the 
manner of applying the trade-mark to the goods, and would be bet- 
ter in place if it followed the declaration of the essential fea- 
ture instead of preceeding it. In the next three paragraphs ap- 
plicant does not seem to be describing his fac simile but setting 
forth what he usually does. This is not required; what is wanted 
here is a full description of the fac-simile presented. The next 
two paragraphs arc apparently a continuation of the first on the 
second page and should follow it. These arc mere criticisms in- 
volving matter upon which the Examiner does not insist, and are 
only noticed now to show carelessness in the preparation of the 
case, and to introduce the actual objections which the Examiner 
has made in his action from which appeal is taken. 

From the place in the specification indicated on page 3 
by the insertion of Amendment A, to the end of paragraph near the 
middle of the next page, the statement now busies itself with de- 
scriptions of representations of the trade-mark upon wrappers for 
cakes of soap, and upon the soap itself. This is a matter not 
shown in the fac simile, not necessary to an indication of the es- 
sential feature of the trade-mark, and of no value for the informa 
tion it gives to the public or to the ofiice. Applicant is at 



J. A. Armstrong & Co.. Sheet -5- 
perfect liberty to say 'I sometimes impress my trade-mark directly 
upon the calces or bars of soap or print it upon wrappers for the 
same 1 or words to that effect, which would accomplish all that he 
requires, that is to set forth that the trade-mark may be exhibit- 
ed in other ways than that shown in his fac simile. But there is 
no advantage to him nor to any one in the detail into which he has 
gone, which serves only to create confusion, to encumber the files! 
and to add to the office bills for printing. 

The Examiner has endeavored with more or less success 
ever since the enactment of the lav, to hold applicants down as 
closely to its precise requirements as was consistent with jus- 
tice to them and imparting the most accurate information to the 
public. There must be some limit to the latitude allowed appli- 
cants for registration in respect to what they are to' be permitted 
to show and describe. It was long ago settled, ( ex parte Kimball, 
C. Do, 1877, p. 54,) that the multiplication of illustrations that 
simply s ow various modes of applying the mark, different arrange- 
ments of non-essential matter, &c, is not only unnecessary, but 
encumbers the office records, and tends to confuse the public as) 
\ to the scope of the registration. The reasoning in this decision 
exactly applies to the present case. 



J. A. Armstrong & Co.. Sheet -6- 

The more the Examiner has to do with trade-marks the 

stronger becomes his conviction that the interest of the public 

and of the registrant arc both best served by concise description / 

and clear cut flefinition of that which constitutes the essential \ 

i 

features of the trade-]. 'ark. .All other matter outside of enough 
to comply with the statutory requirements is extraneous, superflu- 
ous, and confusing. 

There can be no such thing as a broad or generic claim / 
in a trade-mark case. All looseness and ambiguity is at variance 
with that precision, that invariable character, which must be the 
attribute of every trade-mark in order that it may possess any 

value, and against such looseness the Examiner conceives the Of- 

I 

fice ought to contend. 

He hopes for a decision in this case as positive as that 
in the Kimball case just cited." 

I think this is substantially correct. The forms to 
which the Examiner refers were adopted in the light of experience 
and where there is no good and sufficient reason is clear why- 
there should be deviation from them, they should be rigidly fol- 
lowed. 

Regarding the descriptions of representations of the 



J. A. Armstrong & Co., Sheet -7- 
trade-mark upon wrappers for cakes of soap, and upon the soap its- 
elf, it is well said that this is matter not shown in the fac sim- 
ile, nor necessary to an indication of the essential features of 
the trade-mark, nor of value for the information which it gives to 
the public or to the Patent Office; and as regards the statements 
of the applicant in the specification that, in adition, there is 
usually printed upon the wrapper directions for the use of the 
soap, which may be both in English and German, or other languages, 
and that there is "usually printed thereon a statement of the mer- 
its of the soap, together with the color and tint of the is^ue 
bearing this information, it is perfectly clear that this is ir- 
/ relevant, and should not encumber the ca^e. 

The action of the Examiner is approved ana affirmed* 






r 



A 

of 
CHARLES. E. C.ARTER, 

Decided Oct. 10, 1884 . 

Recorded Vol. 26. Page 510. 

oOo 

DYRE1IF0RTH, ACTING COMMISSIONER: 

The point of appeal is upon the distinctive features of 
a label and the difference between it and a trade-mark. 

This question has been fully treated in ex parte Hoodie 
Sept. 22, 1884, (28 O.G.,1271). "The distinctive feature of a la- 
B bel is that it is descriptive. It tells one of the contents of 
"the package to which it is affixed. It is composed of words in 
"ordinary use, used with their ordinary significance." 

In the case in hand the grotesque figure of the negro 
and the words accompanying are in no way suggestive or descriptive 
of the contents of the package, but are merely such arbitrary sym- 
bols as might be adopted as a trade-mark, and as they form the 
larger and an inseparable part of the application their registra- 
tion as a label must be refused. 

IHae, distinction between labels and trade-marks and the 
differences of legal status between the two have been clearly de- 
fined inthe case of the Yale Cigar Manfg. Co. v. Yale, (MS. Dec. 
of Com., Vol. 27, P. 1. ) 

The action of the examiner is sustained. 






A£ZiIc a T I ai 

of 
JOHE J. W E S. T, 

Decide! Oct. 16,1884 . 

Recorded Vol. 2G, Pa^e 522. 

0O0 

DYRENFORTH, ACTING COMMISSIONER: 

The appeal is from the action of the examiner rejecting 
the application on the registered trade-mark /10,381, June 20, 
1883, the word "Ferrolinc" for molded articles resembling glass, 
such as tiles, plaques, etc. 

The trade-marl; applicant seeXs to register is the word 
"Terraline" for vases, placques, and similar articles, and the 
question to be decided is, do these words so' closely resemble each 
other that the public would be deceived by their use by different 
manufacturers upon goods differing but slightly in the character 
of the material and not at all inform. 

As to the appearance of the ?/ords, the resemblance is 
striding, not only at the distance-, from counter to shelf but upon 
closer inspection, and with the peculiar printing and fanciful de- 
corations that usually accompany such trade-marks even a trained 
eye would be deceived. In the written word there is a still great 
er resemblance, and when the central portion of the "F" is omitted 



J. J. West, Sheet -2- 
and the connection between the "o H and the "1" is carried down 
rather low, they arc the same. 

In sound, having the same termination, and other sylla- 
bles very much alike, only slowness of speech and olear-cut enun- 
ciation would show the difference. 

The eye and the ear are both liable to bo deceived. An 
order by nail as well as by messenger is likely to go astray. 

A purchaser intending to deal with a manufacturer well 
known and worthy of confidence may receive his goods from another, 
an utter stranger. 

Bot ) of the articles of merchandise are apparently of 
plastic material, and of the same form, and therefore kept by the 
same merchant, and an order by lotter might be entirely miscon- 
strued by Lhe omission to 'cross a "t" or dot an "i" . The differ- 
ence between the words is slight, and not that specific one that 
the law calls for to prevent deception and to protect the public. 

The decision of the examiner is affirmed. 



l { kIMJ 1 



of 

HOWARD C. EU111, 
D ecided Get. 21,1884 . 

Re corded Vol. 2G, P age 528. 

0O0 

DYREITFORTH, ACTING COMMISSIOEER: 

The appeal is taken from the decision of the examiner 
refusing to register the words "White Pine" as a trade-mark for 
liquid medicines, the labels indicating a balsam for coughs, colds 
etc. The rejection is on the ground that the words sought to be 
registered are in their nature descriptive. 

This would seem to be the case. The question is not on- 
ly whether the words arc descriptive of the merchandise to which 
they are applied, but whether the words are arbitrary signs or sym 
bols, or are in their nature descriptive. Hot whether applicant 
is using the words as descriptive of something in the medicine 
that he is making, and for which he wishes a trade-mark, but, as 
settled by the long practice, whether another could not truthfully 
use these vfords to indicate that the product of his manufacture 
contained white pine, the gum of which is well known for its medi- 
cinal properties. 



K. C. BurXe, Sheet -2- 

Ihe label registration, #4,151, was not cited by the 
examiner as an anticipation in the way of rejection, but to show 
that the words "White Pine" could be and had been used descrip- 
tively by another person, and he is fully sustained in his opinion 
by such label. There is no doubt that the words "White Pine" as 
applied to a cough medicine are descriptive in their nature, and 
not of the arbitrary character essential to a trade-mark. 

The decision of the examiner is affirmed. 



/' A Z Z k i c A |i Oi H 

f ' of 

Decided Cot. 51,1884. 

Recorded Vol, 26, Page 527 , 

oOo 

DYRETTFORTH, ACTING COMMISSIONER: 

The appeal is taken ft on the decision of the Examiner 
refusing to register as a trade-mark the words "The Boston as ap- 
plied to hair nets, on the ground that a word geographically de- 
scriptive cannot become a trade-mark. In support of this the ex- 
aminer cites the following authorities; 

The Del. & Hudson Canal Co. v. Clark, 1 O.G., 279, and 
Armistead v. Blaekwell, 1 O.G., G05, 
and he might have cited others sustaining this well knoTm princi- 
ple. If the applicant doe? not. use these words as geographically 
descriptive, others can, and the principle is the same. 

Boston is a gepgraphical name, and could he used by oth- 
ers and by applicant as designating whence the goods come, and the 
word is therefore descriptive in its nature. The authority cited 
in support of the use of the definite article as a distinguishing 
mark is not sufficient. The same COHaaissioner that made the de- 



Jennings & Sons, Sheet -2- 
cision cited, receded from it in ex parte Hall, Commissioner's 
MS. Decisions 1872 (see Brovme 011 Trade-MarKs, p. 272, sections 
378 - 9), and the practice of the Patent Office has been in accord 
ance with the later decision. 

The decision of the examiner is affirmed. 



^f-4 






APPLlC.ATI._On 
of 

GEORGE J . C A R I! E Y, 



Decided Jan. 5, 1085. 

Recor ded Vol. 27, Page 115. 

oOo 

BUTTER?/ORTH , C OMMI SSI ONER : 

The appeal is taken from the refusal of the Examiner to 
register as a label the subject-matter set forth in the above 
application. 

The applicant describes and shows a disk of thin paper 
having the figures and graduations usual in watch dials printed 
upon it in such a way that when the dish is pasted upon the inside 
of a watch crystal, the figures, &c. will appear in their proper 
position ,and can be read from the outside. 

The Examiner's grounds for objection are, first, that 
that matter does not answer to the established definition of a 
label; second, that the dish of paper so enters into the structure 
of the article as to have a mechanical function, and is, therefore 
a part of the article itself, and not a label for it; and third, 
the identical matter being already covered by letters patent, can- 
not now be protected or have the semblance of protection by the 



G. J. Carney, Sheet -2- 
issuing of a certificate of label registration. 

The first ana second of these objections unite to form 
one. The disk of paper in question being pasted to the crystal, 
as is plainly evidenct, to assist in forming the watch, which is i 
incomplete without it, and not ''to indicate its nature or contents 
( Ex parte Moodie, XXVIII. 0. G., 1271,) it can in no sense be 
termed a label, nor could it be applied to watches or packages 
containing watches, as such. It lacks the first essential, — de- 
script iveness. An examination of patent to John J. D. Trenor, 
"Dial for Watches and Clocks" , #202,513, August 8, 1882, shows 
that just such a dial as applicant seeks to register as a label 
has been described and specifically claimed as a mechanical device 
in said letters patent, and is therefore, impossible for the Patent 
Office to recognize in the applicant any part of the right which 
it has by its certificate declared to the public to lie exclusive- 
ly in another. 

It is perfectly obvious that the application for regis- 
tration should be refused, but, as the Examiner has stated the 
case with great clearness and force, his statement is here given. 

"This appeal is taken from the Examiner's refusal to 
admit to* registration as a label Tinder the act of 1874 the matter 
which applicant describes as a label to be used for supplementary- 
dials by application or transfer of the same on the crystal 



G. J. Carney, Sheet -5- 

glasses of watches, clocks, or other time pieces," The matter 
shown corresponds with this statement in being a disk or circle of 
thin paper having the customary graduations, and the figures indi- 
cating the hours printed upon it in the ordinary way, as in watch 
dials, so that when pasted to the inside of a watch crystal the 
figures will he read from the outside in their proper positions. 
It is apparent also that, when suitable paper or other materials 
are used, a trasnfer may be made of the figures and graduations 
upon the crystal itself. 

The reasons for the re lection are set forth in the Ex- 
aminer's letter of April 8th in which he holds; first, that the 
matter in question is not a label in the sense of the well known 
definition of the word; second, that matter of any hind which en- 
ters into the structure of an article so as to have a mechanical 
function, is a part of the article itself, and not a label for it; 
and third, that the identical matter being already covered by let- 
ters patent, cannot now be protected, or have the semblance of a 
protection, by the issue of a certificate of label registration. 
These reasons will now be stated at greater length: 

1st. Reference is made to the Commissioner's decision 
in ex parte Hoodie, decided Sept. 22, 1884, in which Worcester's 
definition of a label is quoted and apparently adopted as the 
technical definition: 'a small piece of paper or other material 
containing a name, title, or description, and affixed to anything 
to indicate its nature or contents. ' In Trade-Hark Rules of the 
Office, page 10, is the definition formally adopted by the Office 
of the words 'print' or 'label', which is as follows: 

'The words 'prints* and 'labels' as used in this act, so 
far as it relates to registration in the Patent Office, are con- 
strued as synonomous, and are defined as any device, picture, word 
or words, figure or figures (not a trade-mark) impressed or stamp- 
ed directly upon the articles of manufacture, or upon a slip or 
piece of paper, or other material to be attached in any manner to 
manufactured articles, or to bottles, boxes, and packages contain- 
ing them, to indicate the contents of. the package, the name of the 
manufacturer or the place of manufacture, the quality of goods, 
directions for use, <rcc. ' 

In both these definitions, to which the Office lends it 
authority, it is observed that the label is attached to an article 
or to the. package containing it, in order to indicate its nature 
or contents, or to give other information regarding it. This is 



G. J. Carney, Sheet -4- 

the sole use and function of a label. It is a label by virtue of 
its performing this function, and loses the property of a label 
just so far as it departs from this function. In this case the 
label gives no information of the character set forth. The iror&s 
•standard time' are the only words it contains, and these are ev- 
idently only a title, since the fact that a time piece in indicat- 
ing standard time is contingent upon a good many considerations 
besides the affixing of a supplementary dial. 

2d. Matter which enters into the structure of an article 
of manufacture or commerce, so as in combination with other parts 
of the article to assist in the performance of its useful func- 
tions, is a mechanical element, and not a label, ; and should be 
protected, if at all, by a mechanical patent. The doctrine must 
be the same in respect to a label as in respect to trade-marks, 
and it will be found very clearly set froth in the case of Gordon, 
C. D., 107V, p. 103, in which Acting Commissioner Doolittle held 
that an attachment to an article, the functions of which are main- 
ly useful, can:ot constitute a trade-mark. The reason for this 
is stated that the effect of the trade-mark law is to protect sym- 
bols and not inventions or mechanical devices, and it is a common 
right to use any mechanical device unless its use is restricted by 
patent. The reasoning in this decision applies strictly to the 
present case, since, no more than the trade-mark law, does the la- 
bel law propose to protect mechanical inventions. So far as the 
pretended label has a useful function outside of the true function 
of a label, no certificate this Office can give, and no assertion 
the applicant can make, can restrict any other person who ^inds it 
adapted to his uses from using it at pleasure, unless protected by 
letters patent, the only means known tc the law or to the consti- 
tution for protecting a mechanical invention. 

The 3d. roson for refusal tc register is that matter al- 
ready covered by a mechanical patent is not entitled to receivo 
apparent protection under another law by the issue of a label cer- 
tificate. Patent #202,513, to Trenor, August 8, 1882, shows and 
describes the indent ical supplementary dials shown and described 
by applicant, as may be seen by reference to figure 8 of the patent 
and to the specification, in vh ieh it is particularly set forth 
that they may be made of paper and pasted or glued to the crystal. 
It is one of the conditions on which the patent is granted that at 
its expiration, which will be about fifteen years from the preseirt 



i 



i 



G. J. Carney, Sheet -5- 

date, all matter claimed in it as new shall become public property. 
Matter in It not claimed as new is air ady public property by vir- 
tue of its 'publication, unless especially reserved and claimed in 
mother application. Hence the Office cannot by the issue of a 
certificate give to any one a right, or a basis on which to assert 
a right, to the exclusive use of the same matter either before or 
after the expiration of the patent. Substantially this question 
was considered by the Commissioner in the case Lee £ Shepard, 
XXIII. 0. G., p. 1271, and he held that the Office, having adjudi- 
cated certain matter patentable as' design, and by granting letters 
patent having given the patentee the exclusive right to its use 
for a term of years, cannot afterward register the same matter as 
a trade-mark, and give to another party the right to use it as 
such. It is obvious that by such an act the office would trans- 
cend its jurisdiction, since it wonld pretend to recognize a right 
in the second applicant to do that which by its formal certificate 
it had already given the exclusive right to another to do. 

The Examiner is not in the habit of citing his own ac- 
tions as authorities, and yet when supported by higher authority 
or acquiesced in by those who either have a right to appeal or 
are recognized themselves as good authorities on the questions in- 
volved, they may be regarded as affording guidance for future sim- 
ilar cases. .It is his aim, at n:-f rate, that his actions should 
be consistent with each other, until overruled by higher authority* 
He ventures to refer to the two applications of Daniel J. Gale, 
Nos. 15,212 add 15,213, filed November 15, 1882, for registration 
of Dials for Calendar Clocks as Labels. Both cases were finally 
rejected, one December 8, 1882, the other June 20, 1883, and no 
appeal has been taken, though both are in the hands of an attorney 
quite dill'igent in contending for all the rights of his clients. 
In his letter of rejection, substantially the same in both cases, 
the Examiner said: 

'The latoel law does not provide for the protection of 
prints and labels when they constitute articles of manufacture 
by themselves, or when they enter as elements into structures in 
which they perform special functions. The matter presented is not 
a Print or a label to be used for clocks, but is a cloc k dial , 
without which the clock would be incomplete and incapable of per- 
forming any functions. It differs from other elements of the 
structure in that it is made of paper, and the characters on it 



G. J. Garaey, Sheet -G- 

are the work of a printing press . But these differences do not 
relieve it from being an essential element in the structure of a 
clock, or entitle it to protection under the act named, any more 
than if the material used had "been metal, and the ^ characters plac- 
ed upon it by an ordinary metal stamping machine or by hand. ' 

The applicant appears to have acquiesced in this conclu- 
sion. 

The present case is clearly similar. The function of 
applicant's supplementary dial is not set forth. To set it forth 
would be an acknowledgement of its functional character, which ap- 
plicant evidently desires to avoid. But it is clearly indicated 
by the patent referred to, being a device by which the time at 
different points, or on different meridians, may be indicated si- 
multaneously by one time piece. It is an addition to the struc- 
ture to enable it to perform an additional function to add to its 
value or usefulness; and while it has these qualities, it has none 
of the qualities of a label, and has no claim to be protected un- 
der the law for the registration of labels. In fact, if such reg- 
istration were effected, it must be. absolutely without force for 
any purpose. It could not protect the matter of the alleged la- 
bel, being old as shown - by the patent, nor could it protect it as 
an element in the structure, since that is outside of the scope of 
such registration, even if it '..ere not old. Applicant can only 
desire it for the purpose of affixing something to his watch dial 
that will convey. to the mind of the public that he has some exclu- 
sive rights which he does not actually possess. The Office cannot 
knowingly consent that official papers issued from it, and bearing 
its seal, shall be employe- for any such purpose. 

For these reasons the Examiner looks for an affirmation 
of his action. There are two cases involved in this appeal close 
ly similar. What has been said applies equally to both, except as 
to the patent cited as a reference. In applicant's second case he 
shows a 24-hour dial which the reference does not show, but all 
other reasons herein given for rejection are pertinent." 



■ 



/ 



AZZ1ICAT I OS 
of 
I- C. ATKINS & CO., 



Decided Jan. 25, 1885 . 

Recorded Vol. 27, Page 165 . 

O 0o 

BUTTERWCRTII, COMMISSI ONER : 

The applicants seek to register the words "Silver Steel" 

as a trade-marl: for saws, and the Examiner refuses registration on 

the ground that the words are descriptive in character, and the com 

mon property of the public, they having been recognized in the 

trade as a name for steel of a special grade or quality for many 

years past. 

/ The Examiner ful_y shows by reference to English patent 

#1,863, of 1861, that silver has been mixed with iron in the pro- 
duction of steel o He shows further than an alloy of silver and 
steel was made as early as 1822 by Faraday & Stoddart, which was 
soon taken up by the cutlers of Sheffield for fine razors, surgical 
instruments, &c, though the pro-portion of silver was small, and 

he shows further that "Silver Steel" is a term very general! em- 
ployed to designate the finer grades of steel. 

I think it is perfectly obvious that the words are com- 
mon property, and are not, therefore, proper subject-matter for a 
1 aw fu 1 t r a de-mark . 

The decision is affirmed. 

- - - 



^ AP£1ICATI0H 

I MAIBRO^HERS. 

Decided Jan. 2C. 1085 . 

Recorded Vol. 27, Page 171. 

e oOo 

BUTTERWORTH, COMMISSIONER: 

In this case I can scarcely hold that the proposed reg- 
istration, "Riz O.K.", should be refused upon the ground that it 
is so near like that of Lacroix Brothers as to make their regis- 
tration a substantial reference, since I do not think that "Riz, 
Extra", as a trade-mark upon cigarette paper, is a proper regis- 
tration, for it means extra rice, or extra rice paper, which is a 
descriptive term, rice paper being considered the preferable paper 
to be used for cigarettes. But if the Examiner sees fit to decide 
that "Riz O.K." is not proper subject-matter for the registration 
of a trade-mark, in that it is descriptive, Riz meaning rice, and 
O.K., though, perhaps, a slang express ion, being understood throughout 
the United States to mean all correct, or all right , or proper, or 
pe rfect , cr excellent. t hat is another natter, which this appeal 
does not present. 

The case is remanded to the Examiner for further consid- 
eration. 



A ZZJii C AT I H 

/ ' of 

MARVIS R-PEAR.SALL, 

Decided Jan. 27, 1005 . 

Recorded Vol, 27, Page 205. 

0O0 

BUTTERWORTH, COMMISSIONER: 

The applicant seeks to register the words "Wooden In- 
dian" as a trade-mark for cigars, and the Examiner refuses the reg 
istration upon the ground that these words and their equivalent 
form are public property to which no one can establish a right of 
exclusive use. The Examiner shows that figures of Indians, gener- 
ally made of wood, are everywhere the recognized sign of the to- 
bacconist, and that any one using such a figure has, therefore, a 
right to call it by its natural name. 

The Examiner goes on to show that words and other sym- 
bols are held to be equivalents in the law, and that, in view of 
this fact, the symbol or its equivalent, as in this case, is public 
property, and hence not proper subject-matter for a valid trade- 
mark. 

It appears that a point was made before the Examiner 

that the tobacconist's sign is not always made of wood, but is 



M. R. Pearsall, Sheet -2- 
sometimes made of plaster of par is, of cast iron, or of other ma- 
terial, but the Examiner demolishes this argument in goods* style 
by showing that many, perhaps, most of the signs are made of wood. 
This particular point as an argument for the allowance of the 
trade-mark registration is not well taken. 

The Examiner reaons further that, as the mark is not to 
be applied to each individual cigar, out to a box or receptacle 
containing them, that, by inference, the wooden Indian outside of a 
tobacconist's shop may also be said to apply to the contents of 
that shop, as to a receptacle on a large scale. 

The Examiner admits that the words "Live Indian" have 
been registered as a trade-mark, but proceeds clearly to show that 
this designation ws not open to the general objection of public 
and common use to which is the expression "Wooden Indian." 

The Examiner shows further that Mr. Justice; Strong in de 

livering the opinion tff the United States Supreme Cpurt in the 

Delaware and Hudson Canal Co. v. Clark, (1 O.G.,279, ) quoting from 

the case of the Amoskeag Manufacturing Company v. Spear, (2 Sandf. 

S. C, 599,) said: 

"The owner of an original trade-mark has an undoubted 
right to be protected in the exclusive use of all the marks, 
forms, or symbols that were appropriated as designating the 



H. R. Pearsall, Sheet -3- 

"true origin or ownership of the article or fabric to which 
they are affixed; but has no right to the exclusive use of 
any words, letters, figures, or symbols which have no'relatio 
to the origin or ownership of the goods, but are only meant 
to indicate their names or quality. He has no right to ap- 
propriate a sign or symbol which, from the nature of the fact 
it is used to signify, others may employ v/ith equal truth, 
and therefore have an equal right to employ for the same 
purpose, " 

The Examiner shows further that John W. Castree & Compa- 
ny of Hew York City made application for the registration of the 
words "Wooden Indian" as a trade-mark for cigars in July, 1379, 
which has stood rejected since that time. 

The Examiner shows further that the applicant in the 
present case has, by amendment, left the essential features of the 
mark ambiguously expressed, referring to his" own name", or his 
"initials" as possibly accompanying the words "Wooden Indian"; 
that the name appears on the fac-simile, the initials only in the 
form of a monogram, which latter is a legitimate trade-mark. 

The Examiner refers, finally, to the sign of the mortar 
and pestle, the well known sign of the apothecary, and implies that 
it would not be legitimate to take this up as a trade-mark upon 
drugs or commodities vended by the apothecary. 

Regarding the Examiner's objection that "Wooden Indian" 
is public property upon the ground that it is the well known sign 



H. R. Pearsall, Sheet -4- 
of the tobacconist, I would say that, while there can he no doubt 
that it is well known and public property _as a. sign , in general, 
it does not follow that it is well known and public property as a 
trade-mark when applied to a particular commodity; and the objec- 
tion that the symbol is to be applied to the box containing the 
cigars, and that the sign represents the entire commodities in the 
shop, rather than to each particular cigar, is not so forcible as it 
would be if it were not the common practice to affix trade-marks 
to cigar boxes , and if the sign did not represent a dealing in 
other things besides cigars in particular, to wit, snuff, smoking 
and chewing tobacco, pipes, &c, &c. 

A trade-mark, among other essentials, must embrace a 
sign or symbol ' applied to a particular class of merchandise, but, if 
any sign or symbol is, in and of itself, particularly descriptive of 
some particular class of merchandise, of course it could not be 
individual property. Mr. Justice strong might, therefore, well say 
that no person has a right to appropriate a sign or symbol which, 
from the nature it is used to signify, others may use with equal 
truth, and therefore have a right to employ for the same purpose. 

I do not understand that "Wooden Indian" generally de- 
scribes any particular kind of cigars. 



H. R. Pearsall, Sheet -5- 

I will accept the Examiner's illustration of the mortar 
and pestle, the well known sign of the apothecary. One could 
scarcely hold that, because the mortar and pestle is thus general- 
ly public property, no one might register it as applied particular 
ly,for example, to an especial manufacture of , say, licorice, an ar- 
ticle in which the apothecary deals; and I doubt that the Examiner 
would have objected to the registration of "Wooden Indian" as a 
trade -mark., if it were used as such upon a particular kind of to- 
bacco pipe, a manufacture in which the tobacconist may deal, as 
well as in cigars. 

With reference to what the Examiner says in regard to 
the application of John W. C as tree & Co., it would seem that they 
have abandonee! the subject, but I make no decision upon this point; 
and in regard to what he cays with reference to the registered 
trade-mark "Live Indian", I would suggest that registration might 
be in the nature of a reference, although I refrain from making 
any decision upon this point either. 

With regard to the Examiner's criticism upon ambiguity 
of expression and other natters in bhe specification of this ap- 
plicant, I would say that these are matters which he may have cor- 
rected. 



H. R. Pearsall, Sheet -6- 

I see no objection to the registration of the words 
"Wooden Indian" applied as a trade-nark to cigars, and must, 
therefore, overrule the decision of the Examiner. 



APPLICATION 

BALAS nins, 

Decided Feb. 35. 1805, 

Rec ord ed Vol. 37, Page 55C. 

oOo 

BtJTTERWORSH, COMMISSIONER: 

This is an appeal fron the decision of the Examiner of 
Trade-Marks refusing to register applicant's trade-mark because an 
application for registration of a similar mark is pending, filed 
by another firm in 1082, the last mentioned application having 
"been withheld from registration because of certain informalities. 
The Examiner, however, proposed to take steps toward putting the two 
applications in interference, if requested to do so by the Balas 
brothers. 

Counsel for the Balas holds that the rejection was not 
a proper one, inasmuch as the application for registration upon 
which they are rejected was informal; and that it would not be 
proper to put the two applications in interference because, the 
other parties not having complied with the official requirements, 
"they are not to be considered in this proceeding." 

As the application of Willeringhaus, Kliriker & Co. has 
remained incomplete almost three years since the last official 



Balas Freres, Sheet -2- 
action, and as they were notfied by the Examiner in that action 
how to obviate the objections thereto, it seems to me that they 
have (applying to them the law and. the rules pertaining to pat- 
ents) by their laohes forfeited any right they might otherwise 
have had to be put in interference with another applicant whose 
case is in proper condition for registration. 

As an interference cannot properly be declared, for the 
reasons indicated, Balas Freres do not thereby become entitled to 
registration, nor, upon the other hand, should they be debarred f 2D m 
registration if they ean overcome the prima facie right of the 
other party to the use of the trade-mark. 

The burden of the proof is upon the Balas, however, in 
view of the second section of the act of March 3, 1881, to show that 
"no other person, firm, or corporation has the righ to such use." 

The other parties were in the Office first, and although 
their application has been rejected, that is not a bar (as it 
would be iii the case of a patent application) to its consideration 
in connection with the application for registration of a later ap- 
plicant, inasmuch as it is indicative that this nark had been adopt 
ed by other parties before this attempted registration by the 
Balas. 



J 



Balas Peres, Sheet -5- 

However the attention of the Office may be called to 
any fact which would be a bar to an application for registration, 
it is the duty of the Examiner to cite it, and thereby give the 
later party an opportunity to be put in an interference when prop- 
er, or, as in this instance, to prove that the other party either 
never had any right to the mart, or that it has been lost by non- 
use. 

Until satisfied upon this point, it is the Examiner's 
duty not to register the trade-nark. 

The suggestion of the Examiner as to placing the ap- 
plications in interference is not adopted; but his decision re- 
fusing to register the mark of the Balas Freres is affirmed. 



of 

GEORGE S. HITCHELL, 
Doc ide a Feb. 25 . 1885. 

Recorded Vol. 27, Page 555 . 
BUTTERWORTH, COMMI SGI OTTER : 

This appeal is taken from the decision of the Examiner 
refusing to register the word "Cuticura" as a trade-mark for me- 
dicinal plasters. 

Registration is refused because the some v;ord was reg- 
istered by Weeks & Potter in 1876, and by their successors, The 
Potter Drug Chemical Company, in 1884, as Hos. 5,094 and 11,876, 
for use on medicinal preparations, the later marls being described 
as for "a salve or ointment which may be spread a& plasters for 
external app 1 i ca' : . ion. " 

The trade-marK act of 1881 and the rules of the Office 
contain provisions for preventing the second registration of narks 
by subsequent applicants where the right to the use of the trade- 
mark, sought to bo registered, either in the identical form, or in 
any such near resemblance thereto as might be calculated to de- 
ceive, is in any other person, firm, or corporation. 

The Examiner held that the effect of registering this 



G. E. Mitchell, Sheet -2- 
trade-marh to Mitchell would he to deceive the public, because of 
its similarity to that before registered and so well known through 
out the country. 

I think he tj^b right, and, therefore, affirm his de- 
cision. 



AZZLICATION 
Of 
HAMILTON DISINFECTANT CKEI.JICAL WORKS . 

Decided Feb. 2C.1865 . 

Recorded Vol. 27, Page 542. 

0O0 

BUTTERWORTH, C OlvE.II SSIONER : 

Applicant shows and describes a plain Greek cross as its 
trade-mark for disinfecting and deodorizing powders, calces and 
liquids, and in the application states that the pictorial repre- 
sentation "may represent any recognized form of cross". The Exam- 
iner objected to register the trade-mark so described, because the 
forms of cross are so dissimilar that, if this description were al 
lowed, the effect would be to cover al least eleven distinct de- 
vices by a single registration. 

The Examiner has so well defined his position that I 
cannot do better than adopt his statement: 

M The different forms of the cross, (vide Webster's Dic- 
tionary, where eleven are given, ) as Greek, Maltese, Latin, Egyp- 
tian, St. Andrews and others, are as iistinot from each other as 
the letters of the alphabet; and no one who has used one of these 
forms to 'distinguish his goods has acquire! thereby a right to ex- 



Hamilton Disinfectant '"orl^s, Sheet -2- 
clude all the world from the use of any of the other forms any- 
more than by the adoption of the letter A he could exclude others 
from the use of. the rest of the alphabet from B to Z. (Gee Browne 
on Trade-Marks , Sec. 588.) 

The attempt to indicate go many forms results Ln just 
what ire ,o avoid - the an; L : all 

distinctiveness in Its irade-mark. [f ., Las idopted i G It 01 
any other particular form of cross as a trade-mark, and made it 
known to the public as a distinguishing mark for its goods, every 
departure from the clear, sharply defined figure which it has al- 
ready employed destroys its identity, and applicant ceases to that 
extent to have any trade-mark. Purchasers who have been accustom- 
ed to buy goods distinguished by a peculiar weli-def ined mark will 
distrust goods having a mark in some respect similar, but on the 
whole, different. It is not the sane. There is no advantage to 
applicant in what is proposed; on the contrary, every disadvantage 
Its advantage is in adopting one single form and never departing 
from it. Then, in case of litigation, a court can at least ascer- 
tain what the trade-mark is which is alleged to be infringed. In 
the form applicant proposes to register this would be impossible 



Hamilton Chemical Works, Sheet -3- 
from the statement, and the court must necessarily fall back on 
what has been actually used, the whole registration going for 
nothing. 

The error of applicant is in supposing it may register 
not only what it uses as a trade-mark, but what it may want to use 
in the future, or what it desires to Keep others from using » It 
imagines that it is entitled to a sort of generic claim including 
all specific forms embraced under it. This error i3 one men often 
fall into through an imagined analogy between a trade-mark and a 
mechanical patent, which analogy, it is needless to say, does not 
exist. 

Applicant is required by the trade-mark act of 1881, 
Sec. 2, to make oath bhat no other person has a right to use the 
trade-mark either in the identical form, or in near resemblance 
thereto, and this laiiguage presupposes a fixed, specific form - an 
invariable form. There can be no form indent ical with one capable 
of numerous variations do distant from one another as the various 
"recognized forms of crosses. 

(■ So far as it is to his own injury, as it undoubtedly 
would be, to register this varying mark, the Office need, perhaps, 
have no concern; but it cannot consent, in view of the claims of 



Hamilton Chemical Works, Sheet -4- 
commerce and the public - whose rights are to be protected as 
well as the applicants - to give its sanction to a case which is 
at variance with all established principles of trade-mark law as 
well as of the particular statute by authority of which it acts. 
The Examiner's decision is therefore affirmed. 



APPLICATION 

£11111 s & i R n s t, 
Dec ided I v.'ay 14,1885 . 

Ro corded Vo l. 28, Pa ge 95. 

-oOo 

MONTGOMERY, COLH.II SSI CHER: 

The applicants in this case desire to register as a 
trade-marls: for plug tobacco "A penny whether designated by the 
name or the symbol or imitation, or one cent piece or by the coin 
itself." The Examiner holds that the word "Penny" cannot consti- 



tute a legal trade-mark, and that the several forms presented are 
not legitimate alternatives. 

In the view I take of the case it is only necessary to 
discuss the first branch of the issue thus raised, namely, whether 
the word Penny is a legitimate trade-mark. The question is a lit- 
tle perplexing, for the reason that there are no cases in the 
books, so far as my examination has extended, which are directly de- 
cisive of it. The general rule, as laid down in the American 
books, appears to be that no word which is the name of an article, 
or which is descriptive of its kind, character , or quality , may be a 
trade-mark. But it is to be observed that in this case the Ex- 
aminer's objection is that the word Penny is descriptive of price 



Perkins & Ernts, Sheet -2- 
and that hence it may not be a legal trade-mark. To this the ap- 
plicants reply that they do not use the word as descriptive of 
price, or in any other manner as descriptive of the tobacco. They 
propose to sell their plugs of tobacco at the ordinary price, and 
not for a penny each. I can find no decision of the courts to the 
effect that a word descriptive of the price of an article may not 
be adopted a$ a trade-mark, and must, therefore, discuss the sub- 
ject on general principles. 

There is no doubt that the public have the right to use 
freely any word which is descriptive of an article of merchandise, 
and in the manner they a re accustomed to use it; (Newman v. Alvord 
49 Barb., 588). It is true also that the public are not in the 
habit of applying the term "Penny" to articles of merchandise be- 
cause they are sold for that price, as for example, "Penny Candy", 
"Penny chalk", "Penny Iron", ccc. Neither, however, do the applicant 
use the term "Penny in this sense; they do not propose to call 
their tobacco "Penny Tobacco" , but they illustrate their use of 
the word in the following way: they print a f a c- simile of a penny 
or cent, above which is the word "Chew", while beneath it are the 
words "Penny Plug". The advertisement, thus, is the symbol of a 
penny and the words" Chew Penny Plug". How suppose that another 



Perkins & Ernst, Sheet -5- 
manufacturer of tobacco were to decrease the size of his plugs so 
that they might be sold for a penny, and then were to advertise 
them to the public as "Loriliard's Penny Plugs" 1 for example,; or 
use the same words which applicants propose to use, namely, "Chew 
Penny Plugs", or "Chew Penny Plug Tobacco"; would this be a uso of 
the word Penny in a descriptive sense, and in the manner that the 
public are accustomed to use it? On careful reflection, I am in- 
clined to think that it would be such a use. I think that any 
merchant would be entitled to advertise his tobacco, divided into 
penny or cent plugs, as the "Penny Plug Tobacco" , and to request 
the public to chew penny plug tobacco. And if so, then the appli- 
cants are not entitled to use the some words in a similar manner 
as a trade-mark for tobacco or other merchandise. 

That the question is a delicate one I admit, and it is 
with some hesitation, in view of the fact that the applicants do 
not use the word as indicative of price, that I reach this conclu- 
sion. But I find it stated as a general principle in Upton on 
Trademarks, p. 98, that a true trade-mark should" suggest to the 
mind no idea with reference to the article to which it is affixed" 
Perhpas this, though extreme, is the true and only perfect test of 
a trade-mark; any test falling short of it would probably, here and 



Perkins & Ernst, Sheet -4- 
there, admit a word or a mark to the use of which the public have a 
perfect right. As trade-mark is an exclusive property, and in 
derogation of the rights of the public in trade and commerce, doubt 
less the correct principle, in close cases, requires a strict rule, 
of admission of a yiotq. as a trade-mark, in the public interest. 
And therefore, though I cannot say that I know of a case fully sus- 
taining Upton's test, above recited, I am inclined to the opinion 
that it is the safer and better rule, in the absence of authority 
directly to the contrary. Applying it in the case before me, 
there is no doubt that "Penny Plug" does mmt suggest to the mind 
an idea with reference tc tobacco, namely, the idea of price. It 
suggests this idea, notwithstanding the fact that the applicants 
do not use to indicate price. It may have the effect, therefore, 
of deceiving the buyer who is ignorant of the true state of facts; 
and whilst it might be suggested that such deception could not 
work injury to the public, still I think the Office is not called 
upon to discuss and determine this in advance. If there is a 
posnibility of deception, resulting injury may rather be inferred, 
with a view to protecting the public. 

My attention has been called to the case of ex parte 
Knapp (C.D.10V9,p.l43), in which the following ruling was made, 



Perkins & Ernst, Sheet -5- 

though it was, perhaps, not wholly necessary to the decision of 

that oase: 

"The mere allegation in an application, or in the Offi- 
cial Gazette, that a word or term is arbitrarily selected is not 
conclusive, but it must on its face convey clearly the further im- 
pression that it is neither a descriptive nor a deceptive term." 

This expression of opinion might well have been founded 
on the principle laid down by Upton, and it indicates the disposi- 
tion of the Office to adopt and enforce that principle. If applied 
to the case now before me, it would certainly bar the right of the 
applicants to the use of the word "Penny" as a trade-mark for their 
tobacco. 

The applicants have pointed out the fact that the Office 
in 187G allowed the registration of the wrods "Gold Dollar" as ap- 
plicable to soap (see trade-mark Ho. 4311); but, in my judgment, 

this is not a precedent directly in point. " Gold Dollar " is not 

i 
only not the name of a coin, but in not ordinarily descriptive of 

price; hence it may, perhaps, be a legal trade-mark, although that 
question I will not undertake to discuss. I simply say that the 
cases are not parallel. 

On the whole, as a rejection of the application for reg- 
istration does not debar the applicants from using the word penny 
as a trade-mark, and as I have grave doubts of its legality, I am 



Perkins & Ernst, Sheet -6- 

<X 

eonstrined to deny their right of registration, and to affirm the 

decision of the Examiner. 






ALLkLSLAHQK 
Of 

FRANK _J?. SKIT!, 



Decided IJay 29,1885. 

Re cor dec. Vol. 28 , Page 164 » 

ooo 

VANCE, ACTING COMMISSIONER: 

I have consider the argument of counsel for Mr. Smith 
on the rehearing of the Commissioner's decision of the 20th ulti- 
mo affirming the action of the Examiner refusing to admit to reg- 
istration as a label certain matter described in the application. 

There has been submitted in said argument a copy of a 
label containing similar metier which, it appears, was registered 
on August 19, 1884, 7^4,208, and counsel very pertinently remarked 
"that there is an error somewhere." Brit I think he will realize 
that the fact that a prior label of a similar kind was allowed 
registration is not to be followed as a precedent by the Office in 
the event that such registration was erroneous. On consideration 
of the facts and the law, I am impressed with the diea that that 
registration wr.s erroneously allowed. The Examiner has termed the 
function which the label is intended to perform as mechanical, and 
has cited as covering substantially the same devices patents to 



F. P. Smith, Sheet -2- 
Ives, #156,225, to Hawkins, #165,488, and to Hawkins, #169,992. 
These devices, which are to be used for recording the hour at 
which a dose of medicine is taken, all of them have a pointer or 
index attached for the purpose of indicating the correct hour. In 
the case before me there is no such index, but the patient's nurse 
is expected to record the time by drawing a pencil mark through 
the proper Roman numeral; that is to say, the present device is a 
mere evasion of the patented devices referred to, and to my mind i 
is intended to perform a mechanical function, as the Examiner af- 
firms. On this ground alone I am of the opinion that it is not 
proper subject-matter for registration as a label. But in addi- 
tion to this there is the fact that the proposed label does not 
contain any item of the matter requisite to constitute a true la- 
bel under the definition and ruler: prescribed by the Office; it 
does not indicate "the contents of the package, the name of the 
manufacturer, o: the place of manufacture, the quality of goods, 
directions for use", or any other similar matter. 

For these reasons I am satisfied that the previous de- 
cision was correct, and the applicant's request for registration 
must therefore be denied. 



AP?L1C.4T.I0.1I 
of 
J OHK DI ETRI CH, 

Decided June 5, 1885 . 

Recorde d Vol. 28, Page 171 . 

oOo 

MONTGOMERY, COMMISSIONER: 

This is an appeal by Mr. De it rich from the decision of 
the Principal Examiner rejecting for registration a label of which 
the title is "Dietrich's Swift-Sure Liniment", and which consists 
of these words, together with the descriptive advertising matter, 
as shown in his fa c- simile. 

The rejection was based upon the ground that the coined 
word "Swift-Sure" constitutes a trade-mark, and upon the ground 
that it has boon recognised as a part of the registered trade-mark 
of P.M.Way,#10, 690, dated Oct. 30, 1883, for certain medicines. The 
applicant urges that this r;ord is descriptive of his liniment, and 
that therefore it is not properly the subject of trade-mark regis- 
tration. If this question were before the Office for the first 
time, such an argument might properly be urged; but in view of the 

fact that the Office has already recognized it as a trade-mark, and 

that it is before the world as a trade-mark under official sanc- 
tion, I not only deem it unnecessary to discuss this quest ion, but 
I find myself compelled to affirm the Examiner's decision 



APPLICATION 

of 

lAlHIAli PLASIIE C. 0. , 

Decided Juno 9,1885 . 

Recorded Vol. 28, Pane 187. 

oOo 

MONTGOMERY, COMMISSIONER: 

This is an apj eal from the decision of the Primary Exam- 
iner, rendered April 17, 1885, rejecting application for registra- 
tion of the word "llentholine" as a trade-mark for medicinal plas- 
ters. 

The application was rejected on the Registered trade- 
mark of Dundas Dick, ^11,318, certificate dated July 15, 1884, "nen- 
tholine" for "medicinal preparations for nervous diseases." Appel- 
lant contends that Dick's registration for all kinds of medical 
preparations v^as illegal; that his plasters are essentially a dif- 
ferent kind of goods from the "stalk" or "pencil", with which a- 
lone Dick has used the word as a trade-mark; that his plaster may 
be used for curing other diseases than nervous disorders, and that 
this puts it in a different class; and that for these reasons he 
is entitled to the registration applied for. 

It appears from the Examiner's statement that the prac- 



National Plaster Co. , Sheet -2- 
tice of the Office is to recognize the particular description un- 
der the class of "Medical Compounds" by a statement of either the 
class of diseases to "be cured, a prominent component of the medi- 
cine, or the form in which it is put up. Dick has specified the 
class of diseases; and the applicant the form of the goods. But 
if "plasters" are included in "medicinal preparations", which they 
seem to be, then the Office has recognized Dick's right to use 
this mark with either pencils or plasters of menthol, and it is 
concluded by the existing registration. 

Applicant cites ex parte Abbott, which was an applica- 
tion for patent, decided by the Examiners- in-Chief October 10, 
18S4, as holding "that the plaster, to which appellant applies the 
mark in question, is a distinct article from the pencil, to which 
it is applied by the registrant." But this does not change the 
status of tho trade-mark "Llentholine" in the Office, I think, 
which, as above remarked, has been allowed for all medical prepa- 
rations for nervous disorders. 

It may be true, also, that the plasters in question are 

adapted as well to the cure of the ailments other than nervous dis 

orders; but I hardly think such adaptability would warrant the Of- 
fice in regarding thorn as belonging to another class of "medicinal 
preparations for nervous diseases." 

For the foregoing reasons the decision of the Examiner 
is affirmed. 



A p p l i e. a t JL o. 2L 

of 
G.. A. ^H0.UDY & Ji 0. 1, 

Decided June 11,1885 . 

Recorded Vol, 28, Page 200 . 

oOo 

MONTGOMERY, C 0LH.il SSI CHER I 

This appeal raises the question whether applicants may 
register the word "Wonderful" as a trade-mark for soap. 

I think there is no doubt of the correctness of the Ex- 
aminer's decision denying said right. The word is naturally de- 
scriptive of the object to which it is appropriately applied, and 
expresses the fact that wonder or admiration is awakened by some 
quality or property belonging to it. If a given soap should have 
an unuaually excellent cleansing capacity, for example, it might 
appropriately be termed wonderful by its maker and seller. Coun- 
sel insisted in argument that the word was in no sense descriptive 
of this particular soap, and that may be the case; but obviously 
it might describe the excellence of another soap, and its manu- 
facturer would have a perfect right to advertise it so. Certainly 
the public would be very apt to regard the word as descriptive of 
some quality in the soap, whether it were in fact so or not. "Won- 
derful", in my .judgment, is not a legitimate trade-mark. 

The Examiner's decision is affirmed. 



APPLJL.CATi.01I 

cf 
G10.RGE M. BERI.KGER, 

Decided Aug. 24, 1805 . 

Recorded. Vol, 29. Page 12. 

oOo 

MONT GOMERY , C OMMI SSI ONER : 

On the 15th day of July last a reference was made in 
this case to the board of examiners- in-chief for their advice, (:.:s 
Decs. Vol. 20, p. 322. ) Sometime since such advice was received* 
I have delayed final action in the case for the reason that I had 
serious doubt about what should be done. Even now I feel impelled 
to do the very ungracious thing of declining to accept the views 
of the majority of the board. 

It will be remembered that applicant asks the registra- 
tion of the compound word "AirU-bacteria" as a label. 

A label is defined to be" a small piece of paper, or oth- 
M er material, containing a name, title, or description, and affixed 
"to anything to indicate its nature or contents." ( See Ex parte 
Moodie, 28 O.G., 1271.) "The di stint ite feature of a label is 
"that it is descriptive, It tells one the contents of the package 
"to which it Is affixed. It is composed of words of ordinary use, 



G. M. Beringer, Sheet -2- 
"used with their ordinary significance. It is such a placard as 
"might be written by any one who had such goods to sell, irre- 
spective of their origin." (ib.) 

By the provisions of section 5, chapter 301, Revised 
Statutes of the United States, it was made the duty of the Com- 
missioner of Patents to supervise and control the entry or regis- 
tration of prints and labels , designed to be used for articles of 
manufacture other than pictorial illustrations, or "works connect- 
ed with the Fine Arts." 

In the "Rules and Forms adopted by the United States 
"Patent Office (December 17, 1804, ) for the Registration of Trade- 
marks under the act of March 3, 1881," it is declared, after re- 
ferring to the statute above cited, that- 

"The words 'prints' and 'labels' as used in this act, so far 
as it relates to registration in the Patent Office, are con- 
strued as synonomous, and are defined as any device, picture, 
word or words, figure or figures (not a trade-mark) impressed 
or stamped directly upon the articles of manufacture, or upon 
a slip or piece of paper, or other material, to be attached 
in any manner to manufactured articles, or to bottles, boxes, 
and packages containing them, to indicate the contents of the 
package, the name of the manufacturer or the place of manu- 
facture, the quality of goods, directions for use, &e. n 

This same statute provided that for such registry of any 

such prints and labels not a trade-mark six dollars should be paid 






"4 



G. H. Beriiiger, Sheet -3- 

It is very clear, therefore, that this statute did not 
intend to permit trade-marks under the guise of labels to be reg- 
istered at a cost of six dollars. 

When a label is so registered it seems to confer upon 
the owner the same substantial protection which is afforded by a 
copyright. ( Ex parte Ltoos-i-de.) No one else thereafter has the 
right to use the same label. The privilege of using this descrip 
tive word as a label is secured to him alone. 

On the other hand, "the difficulty of defining this 

"thing called a trale-inark has been recognized by the ablest minds 

(Par. 80, Chapter 3, Browne on the Lav; of Trade-Marks, p. 53.) 

I can only quote what has been said: 

"A trade-mark is the name, symbol, figure, letter, form, or 
device adopted and used by a manufacturer or merchant in or- 
der to designate the goods that he manufactures or sells, and 
distinguish them from thise manufactured or sold by another, 
to the end that they may be known in the market, as his, and 
thus enable him to secure such profits as result from a rep- 
utation for superior skill, industry or enterprise." 

(Upton on the Law of Trade-Marks, p. 0.) 

"The trade-mark may consist in the name of the manufacturer 
or the merchant x x in a seal, a letter, a cipher, a inon- 
gram, or any other sign or symbol that can serve to distin- 
guish the products of one man from those of another. It may 
be any symbol or emblem, however unmeaning in itself , as a 
cross, a bird, a quadruped," &c. 

(Browne on the Law of Trade-Marks, par. 87.) 



G. H. Beringer, Sheet -4- 

To secure the registration of a trade-mark the owner 
thereof must pay twenty-five dollars, and he must also file a 
carefully prepared and verified application. (See act of Congress 
of March 3, 1381. ) Very clearly, therefore, Congress did not in- 
tend that a trade-mark should he registered as a label at a cost o 
of six dollars simply by calling it a label. 

This word "Anti-bacteria" may not be a trade-mark, it 
may never become one, but even though both these things are true, 
it does not necessarily follow that it may be registered as a la- 
bel. 

I see no reason why I should not concur fully in the 

opinion in ex parte Hoodie, above refered to. The word sought to 
be registered here as a label is the compound word "Anti-bacteria" 
In my opinion this is not a descriptive word, "it has no ordinary 
significance", it is not "composed of words in ordinary use , used 
with their ordinary significance." : y own opinion is that when a 
party himself coins or invents a word as a designation of merchan-l 
dise, and then proposes it for registration, it must be registeredj 
then or thereafter, if at all, as a trade-mark and not as a label. 
I am therefore reluctantly compelled to disregard the 
advice of the majority of the board of examiners- in-chief, and to 
sustain the ruling of the Examiner of Trade-Marks. 



A PPL X .C A 110 N 

of 



A.^IIUXAII & 11-, 



Decided 0ct.25,lGG5. 

Piecordod Vol , 20, Page 251 . 

oOo 

VANCE, ACTI1TG COMMISSIONER: 

Applicants desire to register a trade-mark for"Boy's 
Clothing" to "consist essentially of the arbitrarily selected 
words "Canary Seat." These words "are used by being printed on 
slips in any desired colors and fastened to the garments." Appli- 
cants have used it since June 1, 1035. 

The Examinur refused to register and states his objec- 
tions as follows: 

"The Examiner's objection is based simply on the 
fact well known to every dealer in clothing and to every per- 
son who has ever been in the military service that this is an 
expression ordinarily used to indicate re- inf or cement of 
trowsers in thosu parts most liable to wear by contact with 
the saddle." 

The Examiner says further that if the particular de scrip 
tion of goods to which the trade-mark shall be applied exclides 
"trowsers" that there will be no objection to registration. 

The Supreme Court of the United States, in The President 



A, Shuman & Co., Sheet -2- 

of the Delaware and Hudson Canal Company vs. Claris decided as 

follows: 

"The office of a trade-mark is to point out distinctive- 
ly the origin or ownership of the article to which it is af- 
fixed, or in other words to give notice who was the producer" 

See Official Gazette, .larch 26, 1872. 

The applicants wish to register the trade-marl: they use 
in their business to carry out the idea of the Supreme Court to 
wit: "to give notice who was the producer." 

They have chosen the word "Cavalry Seat" and applied it 
to "boy's clothing." It is doubtless true that pants worn by Cav- 
alry are re-inforced, but these words are for boy's clothing and 
may be attached to other portions of a boy's outfit than his trow- 
sers. 

Any other party can make boy's clothing of a similar 
character, but he or they could not use the trade -mark of the ap*~ 
pli cants. It seems to me that the words "Cavalry Seat" are ar- 
bitrary when applied to boy's clothing and ought to be admitted to 
registration. 

The Examiner's decision is reversed. 



A ILL k L c, at i o. n 

of 
C.HA3E & SAIIBORI, 

Dec id ed Cot, 25, 1605. 

Rec orded Vol. 29, Page 252 . 

. O oo- 

VANCE, ACTING COMMISSIONER: 

This is an application to register a trade-mark describ- 
ed as follows: 

"Our trade-nark consists of the word ' Sjandajc.4 1 .^- This 
word has generally been arranged as shown in "the accompanying 
fac-sirnile above the word * Java 1 > but the word 'Java' may be 
omitted or the name of some other description of coffee sub- 
stituted therefor, without altering the character of our 
trade-mark, the essential feature of which is the arbitrarily 
selected word 'Standard', which may be printed in any style 
or color and may be accompanied by the name of the firm eith- 
er with or without printed matter as desired. This trade- 
mark we have used continuously in our business since Novem- 
ber 1st, 1878." 

The class of goods to which the trade-marls, is appropri- 
ated is roasted and roasted and ground coffee. The Examiner re- 
fused to' register on the ground that the word "Standard" "is sim- 
ply indicative of high quality either alleged or genuine in the 
"goods to which it is applied" and contends that it would be so 
regarded by consumers. 

The Examiner refers to ex parte Colin 16 0. G., G80, in 



Chase & Sanbron, Sheet -2- 
whioh the Commissioner held that "Standard A" could not be a trade 
mark for cigars, but admits that trade -marks bearing this word 
have been registered, yet that the reasons were special in such 
cases. I find in e x parte Conn, the Commissioner held that the 
word and letter "Standard A" was descriptive and sustained the Ex- 
aminer in refusing registration. On the other hand the following 
trade-marks for different kinds of merchandise bearing the word 
■Standard 11 have been registcred:- 

No. 9435 June 8, 1882, Packing Material. 

■ 9620 Aug. 22, » Shoes. 

n 9755 Oct. 31, M Oil-cloths. 

" 10205 Apr. 24, 1883, Printing-presses. 

" 10097 Mar. 13, " Whalebone. 

" 10945 Aug. 7, ■ Shears and scissors. 

So it shown that the practice of the Office has not "been 
uniform. 

In the Official Gazette, Oct. 20th inst., I find 12667 
the letters "I X L" for Lager Beer - 12,676 the word "Best" for 
Wheat flour, and 12,097 "Pilisbury Best" for Wheat flour. In 
12,676 the record says in explanation of the trade-mark, "the es- 
sential feature of which is the word 'Best 1 when composed of the 



Chase & Sanborn, Sheet -3- 
letters of this peculiar design, which was invented and has been 
used exclusively for this particular word and this particular 
case." The words and trade-marks above quoted might in one sense 
be said to be descriptive, but a trade-mark is bo show that this 
is the goods of "A" so that purchasers may Know that it is his 
goods by the trade-mark. 

The word "Standard" has many meanings - It may be a staff 
with a flag; a rule or measure of quantity; a rule or model by 
general consent; the weight of metal and alloy in coin - a stand- 
ing tree or stem. Hence inasmuch as the Office has registered 
trade-marks of the word "Stahdard*, and it has different meanings, 
it may be admitted as an arbitrary w ord and registered, especially 
as the applicants in this case have used it in their business 
since 1878. 

The decision of the Examiner is reversed. 



A PZII C A T I K 

of 

S H A E IT & IliHIAJ 

Decided Jan. 5, 188o . 

Recorded V ol. 50, Page 1 . 

oOo 

VANCE, ACTING COMMISSIONER: 

The Examiner in this case objects to the word "Arcana" 
as being too near alike the word "Arcadia" — the latter word be- 
ins already registered as a trade-mark by Shaen & Christie for the 
same goods. It is not held that the words are identical, but that 
they very much resemble each other, and are calculated to mislead 
the ordinary purchaser. 

Brown on Trade-Marks, Sec. 385, says: 

tt To entitle a trader to relief against the illegal use 
of his trade-mark, it is not^ necessary that the imitation 
thereof should be so close as to deceive persons seeing the two 
mazier 8 ids by side; but the degree of resemblance must be such, 
that ordinary purchasers, proceeding with ordinary caution, are 
likely to be mislead. Lord Cranworth, Chancellor, held: The ac- 
tual physical resemblance of the two marks is not the sole question 
for consideration. If the goods of a manufacturer have, from the 
mark or device he has used, become known in the market by a par- 
ticular name, the adoption by a rival trader of any mark which 
will cause his goods to bear the same name in the market, may be 
as much the violation of the rights of the rival as the actual 
copy of his device„ w 

The Act of March 3, 1801, says: 



Shaen & Pithian, Sheet -2- 

"But no alleged trade-mark shall be registered unless 
the sarae appear to be lawfully used as such by the applicant 
in foreign commerce or commerce with Indian tribes, as above 
mentioned, or is within the provision of a treaty, convention 
or declaration with a foreign power; nor which is merely the 
name of the applicant; nor which is identical with a regis- 
tered or known trade-mark owned by another, and appropriate 
to the same class of merchandise, or which so nearly resem- 
bles some other person's lawful trade-mark as to be likely to 
cause confusion or mistake in the mind of the public, or to 
deceive purchasers." 

Does the word "Arcana" so nearly resemble the word 
"Arcadia" as to be "likely to cause confusion or mistake in the 
mind of the public, or to deceive purchasers?" I certainly think 
it does and that applicant should choose some other word for his 
trade -mark . It is true that "Arcana" means a secret, a mystery, 
and that "Arcadia" means a mountainous country in Peloponnesus, but 
the words resemble each other as the statute sets forth. 

For the above reasons I hereby affirm the Examiner's 
decision. 



APPLICATI.il 
of 
HUBBELL __& LARPABEE, 

Decided April 20, 1806 . 

Recorded Vol , 50, Page 550. 

O 0o 

MONTGOMERY, C OMMI SSI OTIER : 

Applicants desire to register as a trade-mark for crack- 
ers and biscuits the words "Cream Lunch." 

The principal examiner rejected the applicants, and ap- 
peal has "been taken to the Commissioner. 

Suppose a purchaser stops into a confectionary store, or 
other similar place, an ] buy a box of crackers. Sudi box 
is set before him, and he sees I 

"Cream lunch". Of course he at once associates these words with 
the contents of the box; he therefore argues that the crackers 
are cream lunch crackers . Is it not very clear that this trade- 
mark would convey to him the impression that in the manufacture of 
these crackers cream was one of the important ingredients? Sup- 
pose it were Luncft Cream Crackers instead of Cream. Lunch Crackers, 
would it not fairly indicate to his mind, whether true or not, 
that in the manufacture of those particular crackers cream was de- 



Hubbell & Larrabee, Sheet -2- 
pended upon as an important ingredient? 

It would hardly be contended that the expression "Cream 
biscuits" or the expression" cream crackers" does not indicate the 
kind or quality of goods which were offered for sale. Does it 
maXe any difference in this regard that the word "lunch" is also 
employed? Does it not equally import quality? Is not "cream 
lunch biscuit" as significant as "cream biscuit"? 

It seems to me very clear that the Examiner did right in 
declining this registration, and his action is therefore affirmed. 



A P P L I C A T I C If 
THE HOLI/OSS & ED17ARDS SILVER CO. , 
^ Decided Apr. 21, 1086 . 

Recorded Vol. 50, Page 558 . 

O 0o 

MONTGOMERY, COLLIISSIOIIER: 

Applicants propose for registration a trade-mark com- 
posed of two separate words "silver ore." On the 9th of September 
last the Examiner rejected the application on reference to former 
registrations, as follows: Siiveroid, Silverine, and Silver Metal. 
It will be observed that two of the above mentioned ref- 
erences consist of s single word, and the other is so unlike the 
trade-mark proposed that the two cannot well be confounded. 

I am of the opinion that neither of these references is 
so like the one under consideration as to render them or cither of 
them "calculated to impose upon an ordinary purchaser." 

I think the Examiner is wrong, and that the registration 
should be allowed. 



c 



applic.ati.^h; 

Of 

ILL I AM H. J H I S K, 



Decided April, 21,1886 . 

Recorded Vol. 50, Page 559 , 

oOo 

MONTGOMERY, COMMISSI OHER: 

Applicant proposes for registration a trade-mark as fol- 
lows: "Compound infusion of Golden Seal," After being rejected 
by the examiner he amended by adding thereto the words, "Prepared 
only by William H. Johnson, Albany, Hew York, " and was again re- 
jected, and then appealed to the Commissioner. 

Words, to entitle them to fee registered as a trade-mark, 
must not be descriptive in their character, but on the other hand 
must be"purely arbitrary." The expression "Mason's Fruit Jar" is 
not descriptive and purely arbitrary. The some may be said of the 
expression "The Blanchard Churn." But the words "Compound Infu- 
sion of Golden Seal" are certainly descriptive. Are they render- 
ed any less so by adding thereto the words "Prepared only by Wil- 
liam H. Johnson, Albany, N. Y.»? It seems to me not. The addi- 
tional words simply indicate the proprietor or manufacturer. 

I think the Examiner did right in declining registration 
and he is affirmed. 



A P 1 J L I C A T I IT 

of 

II W G & O.HTY[ATER, 

Decided Apr. 27,1806 . 

Recorded Vol. 50, Page 589. 

oCo ■ 

MONTGOMERY, COMMISSI CHER I 

These applicatns ask for the registration of a trade — 

mark of the word "Odontoline. " 



The article in connection with which it is to he employ- 
ed is tooth powder. 

The application was rejected by the principal examiner, 
upon reference to the word "Odontine", which is also used in con- 
nection with the same preparation. 

I have no doubt that these two words applied to the same 
article of manufacture would be exceedingly liable to be con- 
founded by any one , unless it might be so; le person especially 
skilled in such matters. 

I think the Examiner did right in declining this regis- 
tration, and his decision is affirmed. 



tuff* 






APPLICATION 

of 
RICHARD .0 R D, 



Decided July 2,1803. 

Rec orded Vol. 51. Page 128 . 

0O0 

MONTGOMERY, C OMMISSI 01IER : 

On the 11th day of February last applicant filed an ap- 
plication for the registration of a trade-mark. The application 
consisted of the usual "letter of advice", "statement", and lastly 
a "declaration". 

On the 13th day of February applicant was advised by 
office letter that inasmuch as his declaration or oath did not 
show use "of the trade-mark in commerce by applicant between the 
United States and any foreign nation" a substitute oath was re- 
quired. This letter also suggested another unimportant amendment, 
which was complied with on the 19th of the same i:onth. 

February 23rd another office letter was written advising 
applicant that his application v/ould receive "no further action 
until the oath required by the law" was received in accordance with 
the former office letter. 

On the 3rd day of June, a supplemental oath was received 



R. Ord, Sheet -2- 
applicant, in which it was averred that his trade-mark was used by 
him in commerce between the United States and foreign nations, 
specifying them. 

Two days thereafter applicant was advised that he must 
furnish a substitute oath, as the supplemental oath would not a- 
vail. Thereupon and on the 10th instant, applicant attempts an 
"appeal" to the Commissioner. The attention of applicant is invit- 
ed to Rule 140, which, in the opinion of the Commissioner, should 
be observed in all cases of this character. 

For the purpose of disposing of the question sought tc 
be raised, however, the paper cal led an appeal will be treated as 
a petition asking that the Examiner be directed to waive his re- 
quirement that the substitute oath be furnished, and accept the 
supplemental oath instead. It is said by counsel for applicant 
that his first oath or "declaration" is "in strict compliance with 
the law." If this be true then the office has no right to insist 
upon anything further; neither a "substitute oath" nor a supple- 
mental oath can be required. 

The Statute provides in substance that owners of trade- 
marks which are "used in commerce with foreign nations or with In- 

r 

dian tribes, x x x may onlfain registration of such trade-marks by 



R. Ord, Sheet -5- 
eomplying with" certain requirements. These requirements are:- 

First: By causing to "be recorded in the Patent Office "a 
statement", specifying name, domicile, description of goods, de- 
scription of the trade-mark, description of the mode in which the 
same is to be applied, ccc. &c. 

Second: By paying into the Treasury of the United States 
twenty-five dollars » 

' Third: By accompanying such statement with a written veri- 
fied "declaration" to the effect that applicant has the right to 
the use of the trade-mark sought to be registered, and that the 
same "is used in commerce with foreign nations or with the Indian 
tribes." 

Now while the language of the Statute is as above qouted 
that applicant shall verify the declaration in which he shall aver 
that his trade-mark "is used in corner c<; with foreign nations or 
with the Indian tribes", it very clearly provides that he shall 
show that such trade-mark is actually in use in commerce between 
the United States and some foreign nation or Indian tribe, or both. 

How referring to the applicaton as originally filed I 
find that the declaration or oath avers everything required by the 
Statute, except the fact that his trade-mark is used in commerce 



R. Ord, Sheet -4- 
between the United States and any foreign nation whatever. There 
is no intimation in the oath or declaration that such trade-marK 
is or ever has been used in any commerce in which the United States 
is at all concerned. 

While, therefore the language of the original declara- 
tion did conform to the Statute, such declaration very clearly did 
not allege what the Statute intended it should allege, and that 
was that the party seeding the registration was using his trade- 
mark in this country in commerce between it (this country) and 
some foreign nation or Indian tribe. Applicant does not reside 
here; his application was not prepared or executed here. In it he 
recites himself as a resident of England, and there is nothing in 
the oath from first to last, which hints at the fact that his trade 
mark is or ever has been used in the United States at all, or in 
any commerce between the United States and any other country. 

I think it is very plain that the original declaration 
was not sufficient. 

The next and last question to be determined, therefore, 
is as to whether or not this defect should be permitted to be sup- 
plied by a "supplemental oath." 

For reasons of economy, or of office convenience, or 



R. (3rd, Sheet -5- 
both, which seen; to be sufficient, Rule 12 was adopted, which pro- 
vides distinctly that these "declarations" cannot be amended. 

In this case I am free to admit that to require a sub- 
stitute declaration is something of a hardship. However this may 
be I feel myself obligated to observe this rule, and that I have 
no right to set it at defiance. 

This supplemental oath, therefore, cannot be received 
unless "the rule is deliberately disregard ed. 

I am, therefore, compelled to deny applicant's petition. 



i 

^ 



Jf 






/ 



A ZZliI C A TI Of 
of 
I L VER LAKE .COMPANY, 



Decided July 6,1886. 

Re cor dud Vol. 51. Page 152. 

oOo 

MONTGOMERY, C OMMISSI ONER : 

Applicant comes to the office and asks to have register- 
ed as trade-marks for three different kinds of sash-cord the re- 
spective letters of the alphabet A, B, and C, one for each kind of 
cord. He has been rejected by the principal examiner who assigns 
two distinct reasons for such rejection, as follows: 

First : That a trade-mark cannot properly consist of a 
single unadorned unchanged letter of the alphabet. 

Second : Because such a*f examiner from an examination of 
the papers was satisfied that applicant actually now does, and in- 
tends to in the future, use such respective letters as indicative 
of the quality .of the cord for which they are employed. 

From such rejection applicant has appealed to the Com- 
missioner. 

The statute which raker provision for the registration 
of trade-marks is found in the twenty-first volume of the Statutes 



Silver Lake Company, Sheet -2- 
at Large, page 502, and is in substance to the effect that "Owners 
"of trade-marks used in commerce with foreign nations or with In- 
"dian tribes x x x x may obtain registration of such trade-marks" 
by complying with certain requirements. 

Our statute makes no provisions as to what shall consti- 
tute a proper trade-mart, while the English statute does define a 
trade-mark and declares of what it shall consist. "The office of 
"a trade-mark is to point out the origin or ownership of the arti- 
"cle to Y/hieh it is affixed, to give notice who was the producer, 
"and it may consist of a name, mark, or well-known device." (See 
Canal Co. v. Clark, 13 Wallace, p. 322.) 

A generic name or aname merely descriptive of an article 
of trade- of its qualities, ingredients, or characteristics cannot 
be employed as a trade-mark. (Id.) 

"Any device, name, symbol, or other thing may be employ- 
ed as a trade-mark which is adapted to x x x x point out the true 
"source and origin of the goods to which such trade-mark is ap- 
plied." In re B Ian chard, C. D. 1871, page 97. 

Such trade-marks which are otherwise unobjectionable are 
entitled to registration. However, without such registration one 
who has used a particular trade-mark "so long that it has become 



Silver Lane Co., Sheet -3- 



"vT-ell known to the trade as designating" goods of his manufacture, 
may undoubtedly protect himself and the public from the use of 
such trade-mark by an authorized person by a bill in equity, upon 
the theory evidently that such unauthorized person will not be 
permitted by the employment of a symbol which has been used by an- 
other party to mislead the public to the injury of the party so 
lawfully 'employing the same. (Fisher's Patent, Trade-Mart and 
Copyright Digest, page 125. ) 

In this case applicant asserts that these respective 
letters have been for/a long time used in connection with the manu- 
facture of these different kinds of cords, and that they are well 
known to the trade as designating the particular manufacture of 
the applicant. 

Applicant denies, however, that such letters have been 
used or are to be used to indicate in any degree quality, or that 
such letters of themselves indicate quality in any degree whatever 

At the time of the presentation of the case I has seri- 
ous doubts in relation to the registrability of a single letter of 
the alphabet. Upon causing a careful oxaminetion, however, of the 
records of the office to be made, I find that the question is no 
longer an open one here. In view of the facts disclosed I do not 



Silver Lake Company, Sheet -4- 
feel at liberty to exercise my judgment upon the abstract question 
of such registrability, inasmuch as the review above mentioned dis- 
closes the following registrations: 

First : July 21, 1071, "The Congress & Empire Spring Compa- 
ny" registered the letter "C" as a trade-mark for spring water » 
Trade-Mark #598. 

Se cond : August 20, 1872, 0. Cleveland registered the latter 
B S ff as his trade-mark for lead pencils, #959. 

Third: On the same day the same applicant registered the 
letter "M» as his trade-marl- for lead pencils, #961. 

Fourth : December 22, 1874, C. R. Burkee & Co. registered 
the letter "X" as a trade-mark for spices, &c, #2,133. 

Fifth : Liarch 23, 1875, B. F. Avery & Sons registered the 
letter "0" as their trade-mark for plows, #2,302. 

Sixth : On the same day the same firm registered the letter 
"P" as a trade-mark, also for plows, #2,303. 

Sevent h: On the sane day the same firm also registered the 
letter "TT» as a trade-mark for plows, #-2,504. 

Eighth : On the same day. Keif er & Co. registered the letter 
"S" as a trade-mark for ribbons, #2,317. 

Hinth : October 10, 1876, Go Idcnberg & Co. registered the 



Silver Lake Co., Sheet -5- 
letter "G" as a trade-mark for medicines, #4,041. 

Tenth : January 16, 1077, the above-mentioned "Congress and 
Empire Spring Co." registered the letter "E" as its trade-mark for 
water for medicinal purposes, #4,283 

Eleventh: September 2, 1879, Allen & Ellis registered the let 
ter "IT." as a trade-mark for plug chewing tobacco, #7,632. 

Twelfth: September 9, 1879, J. S. Farren & Co. registered 
the letter "F tt as their trade-mark for canned oysters, fruits, and 
vegetables, #7,677. 

Thirteenth: October 7, 1879, C. T. Swift registered the let- 
ter "S" as a trade-mark for a medicinal preparation, #7,720. 

Fourteenth : March 2, 1880, Allen & Ellis, above-mentioned, 
registered the letter "IT" as a trade-mark for plug chewing tobac- 
co, #7,839. 

Fifteenth: November 16, 1880, G. VJhittier registered the 
letter "U" as a trade-mark for plug tobacco, #8,097. 

Sixteenth : August 30, 1881, H. R. Kelly registered the letter 
"V" as a trade-mark for cigars, #8,615. 

Seventeenth : July 24, 1883, Joseph J< Anderson registered the 
letter "A" as a trade-mark for flour, #10,455. 

Eighteenth : April 29, 1884, A. Brown registered the letter 



Silver Lake Co., Sheet -6- 
n K M as a trade-marls for lumber, boards, logs, and staves, #11,152. 

Nineteenth : May 27, 1884, J. B. Pitch registered the letter 
n Z« as a trade-nark for an alloy, #11,201. 

The above registered letters were in eaoh case plain and 
■unadorned, without embellishment and without surroundings. 

An English case is cited by the Examiner in which it was 
declared that such a letter was not entitled to registration as a 
trade-mark. A reference to that case, however, discloses that the 
decision was based upon the fact that the English statute defines 
a trade-mark and of what it shall consist, and a letter is not in- 
cluded in the list. (See _in r_e Mitchell, Cox's Manual of Trade- 
Mark Cases, page 319.) 

In addition to the cases of actual registration above 
related, it was held by Mr. Commissioner Fisher, in re English. 
(C. D. 1870, page 142,) that a letter "when employed to denote a 
particular article of manufacture, being in no way descriptive, but 
a new arbitrary character x x may well constitute a proper 
trade-mark." 

This decision of Commissioner Fisher was referred to ap- 
provingly by Judge Blatchford, in the case of Smith v. Reynolds, 
(30 0. G.,page 214. ) 



Silver Lake Co., Shoot -7- 
I am therefore entirely satisfied that the precedents 

are so abundant and numerous that the question of whether or not 
an unadorned unembellished letter of the alphabet is registrable 
as a trade-mark, must be regarded as settled in the affirmative. 
The following questions remain to be consideredi- 

First: Do the trade-marks proposed for registration in 
this case, or either of them, of themselves indicate or suggest 
quality? 

Clearly they do not. 

Second: Does it appear that applicant uses or intends to 
use them or either of them, as "descriptive merely" of the quality 
of his goods "for the purpose of denoting their quality only"? 
(See 11th Otto, page 51.) 

I think it clearly appears from the affidavits in the 
case that he has not and does not so use the same. 

Lastly : Does the fact which is manifest and conceded that 
these several letters of the alphabet are used and are to be here- 
after used each to mark a certain kind of species of cord, present 
a bar to their registration as trade-marks? 

This question is also an old one in this office, and 
whatever doubts I may have as to the soundness of the practice, it 



Silver Lake Co., Sheet -8- 
nevertheless is established that . such registrations are permissi- 
ble. 

I have only to refer to the following: 
First: The second and third registrations of the foregoing 



To the fifth, sixth, and seventh of such rogistra- 



letters. 

Second: 
tions. 

Third: To the first and tenth. 

Fourth : ±o the eleventh and fourteenth. 

I agree entirely in the idea that the doctrines and prac- 
tices of this office should be, as far as reasonable, settled and 
uniform, and in that view I must overrule the Examiner and permit 
the registration of these trade-marks. 



... . i- ■■"■ /&f*lf ^SF*^ 



1(1 



AZ? HC AT I OH 

of 
ANPORD & S 0. N S, 



De c i de d July 5 1 , 18SS . 

Recorded Vol. 51 , Page 225. 

oOo 

MONT GOMERY, C OMMI SSI OHER : 

O21 the 6th day of March last applicants presented a pe- 
tition for the registration of a trade-mark, which they describe 
as consisting "in the parti-colored badt of velvet carpets, the 
parti-coloring being produced by weaving in the Lack of such car- 
pets^ filling threads which appear only upon the back, and each of 
which threads is parti-colored." 

The examiner refused registration, and after considering 
certain affidavits and arguments filed on behalf of applicants, 
repeated his action, upon which applicants appeal to the Commis- 
sioner. On the argument before the Commissioner counsel for ap- 
plicants insisted that the Commissioner of Patents has no power»tc 
pass upon the propriety, or fitness, or lawfulness of trade-marks 
presented for registration, and no right whatever to refuse to so 
lodge or deposit a trade-mark in the Office because of its unfit- 
ness or unlawfulness", except in the four specific cases pointed 



Sanford & Sons, Sheet -2- 
out and excepted by Section 3 of the Trade-Mark Statute, which 
Section provides in substance as follows: 

First : That no alleged trade-mark shall be registered un- 
less it appear to be lawfully used in foreign commerce, etc. etc 

Second : Nor where such alleged trade-nark consists in "mere 
ly the name of the applicant." 

Third: Nor one which is identical with a registered or 
known trade-mark owned by some one else and appropriated to the 
same class of merchandise, etc. etc., and 

Fourth : Where the trade-mark proposed to be registered so 
nearly resembles some other person's lawful trade-mark as to be 
likely to cause confusion, etc. 

There is much force in this argument, and with certain 
restrictions and qualifications it is perhaps true. I do not 
think, however, that the law intends that the Commissioner of Pat- 
ents shall register everything which may be presented and called a 
trade-mark, even though it is not in the list above enumerated. 
For instance, if a piece of bark, or stone, or stick., or some oth- 
er equally indifferent and inconsequential thing should be pre- 
sented for such registration, it would be the very clear duty of 
the Commissioner to refuse it. 



Sanford & Sons, Sheet -5- 

It is not intended to assert that a proper symbol or 
figure or something of that character, might not be woven in or 
impressed or stamped upon a carpet so as to constitute a proper 
trade-mark, but the trouble here is that the piece of carpet with 
its "parti-colored back" is, if anything is, the trade-mark. 

In this case I entirely agree with, the Examiner that 
"the alleged trade-mark lacks all the elements of individuality 
and distinctiveness necessary to constitute a trade-mark." It is 
not claimed that the fac simile presented, which consists simply 
of a strip of the carpet in question some ten inches in length by 
about one-half the width, .is of necessity exactly like another 
strip of the same dimensions, and the most that can be said is 
that the two piecos would to some extent resemble each other. 

I do not see how it is possible or even practicable to 
register such a thing as a trade-mark, and the rejection of the 
examiner is therefore affirmed. 






AMPLICATION 



(4 

THE BARHEY MYgOLElM CO:iPA:rY , 



Decided Aug. 7, 1883. 

Recorded Vol, 51, P age 25 5. 

oOo 

MONTGOMERY , COMMI SSI ONER : 

By some oversight, for which I am at a loss to account, 
this case, which seems by the record to have been submitted more 
than a year ago, has been overlooked. It caine to the Commissioner 
on appeal from the refusal of the principal examiner to register 
as a trade-mark for perfumery the word "Perpetual," ("Perpetual 
Perfumery.") I think the examiner is wrong in insisting that 
nothing which is in its character descriptive is entitled to reg- 
istration as a trade-mark. The authorities do not go thus far. 
It has been many times held that "A name merely descriptive of an 
article of trade" is not entitle:, to such registration; but the 
fact that the word is to some extent descriptive, is no objection 
to such registration. In other words the trade-mark may be valid 
and registered as such "although suggestive of quality," (Browne's 
Trade-Marks, second edition, paragraph 135.) 

In this case, while the word "Perpetual" perhaps does, 



Barney Myroleum Co., Sheet -2- 
to some extent, suggest quality, it can hardly be said to be in 
fact and fairly descriptive, for the reason, if for no other, of 
its extravagance. 

It was held by my predecessor in the case of Ex parte 
Heyinan, 18 O.G., 022, that -here "the descriptive character that 
tt rnight attach to a word is so very remote as to be but secondary, 
"so that the word will be understood by the public not as a de- 
scriptive but as a fanciful term, it will then accomplish the 
••Office of a trade-marl;." 

I think this case comes fairly within this decision, and 
the registration should be permitted. 






-- 



of 

MO Oil & BROOKE,. 



Decided Aug. 14, 18S6 . 

Recorded Vol., 51, Page 521 „ 

oOo 

MONTGOMERY, C 01M1 SSI ONER : 

This is an appeal from the refusal of the Examiner to 
register under the Act of 1874 a label "bearing a cut of two lit- 
tle girls and the words HE-OS Astracan cloth." The examiner re- 
fuses to make this registration, although he intimates in his ans- 
wer that he would not decline to register the cut. 

The examiner insists in the first place that Lhe word 
"NE-OS" is not a proper descriptive term which may be employed as 
a label, and next that even if it were, applicant "by displaying 
"it in an arbitrary or fanciful form and applying it to his goods, 
"claims it as his own, x x x x has made it his trade-mark." 

A trade-mark is defined bo be "the name, symbol, figure, 
"letter, form, or device adapted and used by a manufacturer or 
"merchant in order to designate the goods that he manufactures or 
"sells, and distinguish them from those manufactured or sold by 
"another, to the end that they may be Known in the market as his, 



Moore & Brooke, Sheet -2- 
"and thus enable hin to secure such profits as result . from a repu- 
tation for superior skill, industry, or enterprise." (Upton on 
the law of Trade-Marks, p. 9.) 

"The trade-mark may consist in the name of the manufac- 
turer or the merchant, x x in a seal, a letter, a cipher, a 
"monogram, or any other sign or symbol that can serve to distin- 
"guish the products of one man from those of another. It may be 
"any symbol or emblem, however unmeaning in itself, as a cross, a 
"bird, a quadruped," &c« (Brown on the Lav; of Tt a de-Marks, par. 
87.) 

A label is defined to be "Any device, picture, word, or 
"words, figure or figures, not a trade-mark, impressed or stamped 
"directly upon an article of manufacture," 

The quest ioii therefore is whether or not the thing pro- 
posed by applicant to be registered is a trade-mark- I think it 
is, and cannot be registered as a label. 



'//j 






APPL1CATJ01I 
of 
I.HE .CHESTER OIL C. 0. , 



Decided Oct. 25,1836 . 

Record ed Yolo 51 , Page 405. 

oOo- 

MONT GOMERY , C OMMI SSI CHER : 

The examiner of trade-marfcs refused to register as a 
trade-mark for petroleisn oil the word "i tat allies s" . His refusal 
seems to be based upon the ground that the word is descriptive. 
No doubt this is true to some extent, but the authorities do not 
go so far as to hold that a word which is descriptive or partially- 
descriptive or somewhat descriptive shall be denied registration. 
It is in cases where the word is "descriptive merely" that such 
registration is refused. I think: this word should be regsitered. 






of 

FELIX E Y D 0, U X, 



Decided Oct. 27.188G . 

Recorded Vol. 51, PaRe 500. 

O 0o 

MONTGOMERY, COMMI SSI ONER : 

In my opinion the Examiner of Trade-Marts did exactly 
right in rejecting this application for registration. Kis de- 
cision is therefore affirmed. 



"Virgin Mary." ' 


















of 



Decided Nov. 10,1886. 

Recorded Vol, 52, Page 140 . 

oOo 

MONTGOMERY, C OMMISSI ONER : 

Applicant presented for registration as a trade-mark the 
simple words unadorned and uneiribellished, "Fragrant Cream." The 
examiner of trade-marks refused its registration, whereupon ap- 
plicant appeal-ed to the Commissioner. 

To entitle a word to rep; i strati en as a trade-mark it 
should be n non- descriptive of the vendible commodity to which the 
seme is affixed." The reason for this is the fact that being so 
non-descriptive the word ceases to he a mere word and becomes a 
denomination of fancy. (See Browne on Trade-Marks, 2d. edition, 
p. 104, paragraph 80.) in other words to entitle a word to such 
registration such word must be non-descriptive and absolutely ar- 
bitrary. 

Let us try the case under consideration by this standard 
Counsel for applicant has kindly furnished the Commissioner with a 
bottle of the preparation for which this trade-mark is intended, 



J. E. Espey, Sheet -2- 

to assist him in determining the case. This preparation presents 

somewhat at least a creamy appearance. It is a liquid contained 

in a small bottle, and pasted thereon are instruct ions for apply- 

if 
ing "the cream." If this preparation is not cream and it has no 

/S 

element of cream in its composition, then it is very clearly de- 
ceptive. If it be cream or if any of the ingredients thereof be 
cream, then the word "cream" as applied to it is certainly de- 
scriptive and not arbitrary. 

It is very easy to see that this word cream may be ap- 
plied to any one of a thousand different articles and be not de- 
scriptive but purely arbitrary. In this case, however, I cannot 
so regard it. The prefixing of the adj endive "fragrant" does not 
help the situation. The preparation is fragrant, it har. a cruamy 
appearance. It seems to me to be almost too plain for discussion 
that the trade-marh "fragrant cream" cannot be allowed to be reg- 
istered for employment upon an article creamy in appearance and 
fragrant to the senses. The examiner is affirmed. 









AZ Zil C A T I 1 

of 

0. W R 1 _R. J 0]: E S,_ 

Decided July C, 18S7. 

Ke corded Vol. 54 , Page 455 . 

oOo 

HALL, COMMISSIONER: 

An appeal is taken by the applicant from a rejection by 
the examiner upon reference cited; but there was no second act i en 
and the appeal is premature. It appears from the answer of the 
examiner that there was no evidence before him that the trade-mark 
cited as a reference had ever been used, although the fact that it 
had been registered might suggest the inference that it had been, 
so that in the present status of the case the applicant might in- 
sist upon his right to register, no .withstanding the reference. 
This has been frequently communicated to applicant, so that there 
seems no occasion for appeal, even if the present petition were 
not prematurely presented. 



'//! 



i 



of 
M. B L C H & C OM? OY, 

Decided July 9,1887 . 

/ g^Ts Re cor do d Vol. 54, Page 458. 

' ooo -^- 

HALL , C OLE.II SSI ONER : 

Applicants seek to register a trade-mark containing the 
following words and arrangement ; The words "Knights of Labor" 
form the upper segment of a circle, the word "WhisKey" forming the 
lower segment. Within the circle as a central line are inserted 
the word and letters "K. of L." above which, within the circle, is 
the word "Distillery," and below are the words "Sour Mash," 

In the application it is stated that applicants have us- 
ed this trade-marls continuously in their business in commerce with 
Germany since May, 1886, branding the sa] e tipon vessels containing 
distilled spirits and printing it upon invoices, bill-heads, cards 
&c. 

The examiner rejected the application. He held it to 
be clear from the legends and characters used that applicants de- 
signed to refer the public with whom they dealt to another origin 
as to the manufacture and character of the article marked than the 



M. Bioch & Co. Sheet -2- 
true one and to induce the belief that . the article was the product 
of a class of persons, artisans, manufacturers, &c, Known and as- 
sociated in the United States as Knights of Labor, the initials of 
whose name had become the common and well-known "K. of L.", and 
this would tend to deceive and constitute a fraud. He also held 
that the legend or name so attempted to be employed belonged to 
those associations and was used by many of them in identifying 
certain manufactures, and while not technically a trade-mark, was 
yet so far their property that applicants could not lawfully ap- 
propriate it and make it their own. This action being repeated by 
the examiner applicants appeal to the Commissioner. 

Prior to the Act of Congress, approved Maroh 5, 1881, 
legislation provided for the registration of trade-marks already 
in use, as well as those intended to be adopted. But this was so 
far changed by the above act that the right to register was limit- 
ed to trade-marks actually used at the time of application for the 
registration. Congress has never at empted to provide any defi- 
nition of a trade-mark. Legislation in this particular has been 
of a negative character, limiting or restricting - declaring what 
may not be used. To determine what is a proper trade-mark and 
what may be registered, reference must be had to the common law as 



M. Bio cli & Co., Sheet -3- 
diselosed in the commercial usages and shows oy the commentators 
and. in the decision of the courts. 

In all the legislation of Congress upon the subject the 
requirement has been that the registry must be of a lawful trade- 
mark. The act of July 1370, found in Sections 4957-4946, R. S., 
though declared unconstitutional in the trade-mark cases, ICC U.S. 
82, has never been expressly repealed. It may well be doubted 
if Section 4959, uhich affects the Commissioner of Patents only, is 
not still in force. It expressly declares that the Commissioner 
shall not receive and record any proposed trade-mark which is not 
and cannot become a .lawful trade-marfe, «f:c. The entire act ex- 
presses a clear inhibition upon the recistry of an unlawful trade- 
nark, or one calculated to deceive the public. 

The act of March 3, 1881, is equally clear. "The Com- 
missioner of Patents shall decide the presumptive lawfulness or 
claim to the alleged trade-mark." 

Section 3: »fto action or suit shall be maintained under 
"the provisions of this act in an;- case when the trade-mark is us- 
w ed in any unlawful business or upon any article injurious in its- 
"elf, or which mark has been used with the design of deceiving the 
"public in the purchase of merchandise, or under any certificate 



M. Blooh & Co., Sheet -4- 
tt of registry fraudulently obtained." 

It must follow from the consideration of these and many 
other similar provisions of the statute that upon the presentation 
of each application for registry of a trade-mark, it is the duty 
of the office to determine whether the proposed trade-mark is a 
lawful one. It must appear to be lawfully ' used by such applicant 
in foreign commerce or commerce with the Indian tribes, and must 
not be merely the name of the applicant, nor identical with a reg- 
istered or known trade-mark of another and appropriated to the 
same merchandise, nor must it so nearly resemble the lawful trade- 
mark of another as to be likely to cruse confusion Or mistake in 
the mind of the public or deceive purchasers. Section 5, Act, 
March 3, 1881, 

What is a lawful trade-mark? As was remarked by an 
eminent judge, it is easier to point out what is not a lawful 
trade-mark than to define what it is. In Canal Co. v. Clark, IS 
Wall. 322, Justice Strong s.-ys: 

"The office of a trade-mark is to point out distinctive- 
ly the origin or ownership of the article to which it is affixed; 
or in other words. to give notice who was the producer. This may 
in many cases be done by a name, a mark, a device, well known, but 
not previously applied to the same article. 

"But though it is not necessary that the word adopted as 
a trade-mark should bo a new creation, never before known or used, 



LI. Bloeh & Co., Sheet -5- 

there are some limits to the right of selection. This will he man- 
ifest when it is considered in all cases where rights to the ex- 
clusive use of a trade-mark are invaded, it is invariably held 
that the essence of the wrong consists in the sale of the goods of 
one manufacturer or vendor as those of another; and that it is on- 
ly when this false representation is directly or indirectly made 
that the party who appeals to a court of equity can have relief. 
This is the doctrine of all the authorities. (Citing Amoskeag 
Manufacturing Company v. Spear, 2 Sandford's Supreme Court, 599; 
Boardman v. Meriden Britannia Company, 35 Connecticut, 402; Farina 
v. Silverlock, 39 English Law and Equity, 514.) Hence the trade- 
mark must either by itself, or by association, point distinctively 
to the origin or ownership of the article to which it is applied* 
The reason of this is that unless it docs, neither can he who 
first adopted it be injured by any appropriation or imitation of 
it by others, nor can the public be deceived, x x The trade- 
mark must therefore be distinctive in its original signification 
pointing to the origin of the article, or it must have become such 
by association. And there are two rules which are not to be over- 
looked. No one can claim protection for the exclusive use of a 
trade-mark or trade-name which would practically give him a monop- 
oly in the sale of any goods other than those produced or male by 
himself. if he could, the public would be injured rather than 
protected, for competition would be destroyed." 

In the present case the applicants represent themselves 
as being domiciled and doing business at Milwaukee, Wisconsin- 
There is no pretense that they are Knights of Labor, or are engag- 
ed in business with them or under their auspices. The extent and 
nature of the associations known in the United States as Knights 
of Labor are well understood and need not be amplified. They not 
only exist in this country as associations interested in the pro- 
tection of laboring men, and for improving and elevating the con- 
dition of the laboring classes, but their existence and organ- 



If. Blooh & Co., Sheet =6- 
izations are well known in Germany and. other parts of* Europe. It 
is clear that this trade-mark points distinctively to their labor 
associations or to their members as a class as the origin or own- 
ership of the articles to which it is applied. The trade-mark 
contains no other references or indication except that the distil- 
lery at which the whiskey is manufactured belongs to and is manag- 
ed by the Knights of Labor, and that the whiskey is originally 
sold by them. Knights of Labor Whiskey . is the legend composing 
the outer circle of the trade-mark; K of L Distillery, Sour nash. 
is that within the circle. Such was its significance when appli- 
cants first began the use of the trade-mark in 1886, and if any 
portion of the public has since learned the true origin of the ar- 
ticle, or the trade-mark has become known by "association", it 
still remains a false representation and a deception as to the 
general public. In other words, this trade-mark is in the nature 
of a false representation, for it induces the public to purchase 
and deal with the article put forth by applicants under the belief 
that it is the article or manufacture of another or a class of 
persons whose articles they prefer to buy. But it is said, the 
Knights of Labor do not manufacture or sell distilled spirits. 
They are not engaged in trade or commerce, and the public cannot 



M. Bloch & Co., Sheet -7- 
"be said to be deceived into the belief that they are purchasing 
the manufactures of Knights of Labor until it first be shown that 
the public have knowledge that the Knights of Labor manufacture or 
sell the articles in question. It is true there are some provis- 
ions in the Statute tending to suggest this view. For instance in 
Section 2, act of .larch 3, 1381, it is required that applicant 
must show that no person has the right to use any trade-mark so 
nearly resembling that claimed "as might be calculated to deceive" 
So also in section 5. Inpoth of these specific cases, provided 
against, there is no doubt involved the idea that the person false- 
ly referred to by a false trade-mark must be a person dealing in 
a similar article of trade or commerce, for other. vise there would 
be no deception in that particular. But the statute has a broader 
meaning, it relates to deception in other respects than . A : - 
tionVrhether the origin or person referred to actually manufactures 
or sells the article. It embraces ail false statements and sug 
tions that mislead the public an >ople dealing with 

the article from the exercise of their choice and freedom of dis- 
crimination in selecting and purchasing according to their tastes 
and judgment. 

A cosmetic sold under the trade-mark of "Balm of a 



M. Bio ch, Sheet -8- 
Thousand Flowers" may have been quite as acceptable and useful 
though made of oil, ashes, and alcohol, as if made by distillation 
of flowers. But in Petri dge v. Wells, 4 Abbott, (New York), 144, 
the court said it was evident that the name given it was to deceive 
the public, to attract and impose trpon purchasers; "that no rep- 
resentation could bo more material than that of the ingredients 

"of a compound recommended and sold as medicine; that there was 
"none so likely to induce confidence in its use, and none, when 

"false, that would more probably be at tended with injurious cense- 

"quences. x x An exclusive privilege for deceiving the public is 

one 
"assuredly not that a Court of Equity can be required to aid or 

"sanction. ■ 

So in relation to :hc present trade-mark. The Knights 
of Labor as an association is recognized as comprehending every 
known class of workmen, artificers, and manufacturers of highest 
skill and merit. The product ion c of their labor and their manufac- 
tures as mere citizens and individuals are reputed and recognized 
in many parts of the United States and in Germany and other coun- 
tries, as possessing superior qualities, but also from sympathy 
with the movement and sentiments adopted by this organization. 
It is not essential to this consideration that the articles and 



M. Bloch & Co., Sheet -9- 
manufactures shall actually possess the supposed qualities. It 
is sufficient that, in the belief and wishes of the people who 
deal with them, they do. The citizens of Prance who have made 
this their adopted country, retain a great and natural preference 
for the manufactures of their native country, founded upon a knowl- 
edge or belief in their superior excellence. A trade-mark upon 
English goods, plainly but falsely J referring their origin to 
French manufactures, would be a fraud. It would be a fraud wholly 
regardless of the question whether such trade-mark nearly resem- 
bled trade-marks of individual manufacturers in France, or whether 
the French used trade-marks to be copied or i: 

The general purpose of the statute as to fraud or decep- 
tion can be illustrated by other consideration. Under it the own- 
er of a lawful trade-mark is protected against invasion of his 
right of property in its use, first, by the statute, which refuses 
registry by another of a trade-mark so nearly resembling it as to 
be calculated to deceive. It also gives hin a remedy in the 
courts' against any one who fraudulently uses or imitates his trade 
mark. But the deception or fraud upon the public is of a somewhat 
different character. The public or the individuals composing it 
have no trade-mark, in the sense just explained. The English 



M. Bio oh & Co., Sheet -10- 
trader vmo uses a false label to give his goods a French origin, 
invades no property right in trade-marks when he imposes his arti- 
cles upon the American public. But he defrauds and deceives them. 
A duly registered trade-marl: aids him in the deception, and to 
some extent makes the Government a party to the imposition. 

Against such deception the persons injured have no ade- 
quate remedy in the courts. Ho action would lie for damages a- 
gainst one using a false trade-mark, but the remedy would be for 
deceit or recission of the contract of purchase for fraud, involv- 
ing' infinite multiplication of litigation, while the amounts in- 
volved in each individual case would be too small to justify it. 
That there should be some protection against such trade-marks, cal- 
culated to deceive the general public, can.ot be doubted; and that 
it is furnished in the legislation of Congress so far as to re- 
quire the Commissioner of Patents to refuse registration to trade- 
marks of that character, is very clear* 

In Manhattan Medicine Co. v. Uood, 108 U. S.,210, the 
court held a trade-mark unlawful, and entitled to no protection in 
the courts, when it was false as to the place of manufacture. The 
trade-mark involved i# that case was employed by Moses Atwood, of 
Georgetown, Massachusetts, upon medicines manufactured by him at 



*m 



If. Bio cii, Sheet -11- 
that place. It was'^twood's Vegetable Physical Jaundice Bitters, M 
and was always accompanied with a label showing by whom and at 
what place it was prepared. Afterward, by transfers and assign- 
ments, the formula for the medicine and trade-marl: and labels came 
to be the property of the Manhattan Medicine Co., of New York, who 
continued the manufacture at the lat J :er city, but retained the old 
trade-mark and labels which represented the medicine as still be- 
ing manufactured at Georgetown, Mass., by Moses Atwood, when in 
fact it was manufactured in Hew York by the Manhattan Medicine Co, 
The court held that such a representation was a fraud,- not upon 
some rival manufacturer possessing a similar trade-marfc or label, - 
but upon the public. The court uses the following language :- 

"The onject of the trade-mark being to indicate, by its 
meaning or association, the origin or ownership of the arti- 
cle, it would seem that when a right to its use is transfer- 
red to others, either by act of the original manufacturer or 
by operation of law, the fact of transfer should be stated in 
connection with its use; otherwise a deception would be prac- 
ticed upon the public, and the very fraud accomplished, to 
prevent which courts of equity interfere to protect the ex- 
clusive right of the original manufacturer* If one affix to 
goods of his own manufacture signs or marks which indicate 
that they are the manufacture of others, he is deceiving the 
public and attempting to pass upon them goods as possessing a 
quality and merit which another's skill has given to similar 
articles, and which his own manufacture does not possess in 
the estimation of purchasers. To put forth a statement, 
therefore, in the form of a circular or label attached to an 
article, that it is manufactured in a particular place, by a 



M. Bloch & Co., Sheet -12- 

person whose manufacture there had acquired a great reputation 
when, in fact, it is manufactured by a different person at a 
different place, is a fraud upon the public which no court of 
equity will countenance. 

"This doctrine is illustrate:, and asserted in the case 
of The Leather Cloth Company (limited) v. The American Leath- 
er Cloth Company (limited), which was elaborately considered 
by Lord Chancellor Y/estbury, and afterward in the House of 
Lords on appeal from his decree. 4 DeG. J. & S. 137, 'and 11 
House of Lords' cases, 525." 

The decision is that such a trade-mark or label is un- 
lawful . 

The court cites and quotes from the case of The Leather 
Cloth Co. v. The American Lether Cloth Co., 4 DeG. J. & S. 137, 
and 11 House of Lords' Cases, 525, which was a case where the com- 
plainants used a trode-mark or label representing that the articles 
stamped with it were manufactured at another place and by other 
parties. It was held to be a fraud upon the public, and, notwith- 
standing the trade-mark was imitated by a rival company so nearly 
"as to be calculated to deceive", as between the goods of the two 
parties, relief was refused. See also Pidding v. How, 8 Simons, 
477; Perry v. Truefitt, G Beav. CG; Fetridge v. Wells, 4 Abbott, 
144; Seabury v. Grosvenor, 14 Blatch. 202; Connell v. Reed, 120 
•Mass. 477; Palmer v. Harris, GO Pen::. St., 15G. 

It is to be observed that in many instances the existence 



M. Bioch & Co., Sheet -13- 
of the fraud or misrepresentation would not appear or "be disclosed 
upon the face of the trade-mark, or in the application for regis- 
try. In such cases the office might not be able to guard against 
the registration and it would be allowed. The only remedy to be 
had would be found in the right of the public to disregard such 
trade-marks, for as shown in the cases cited, the owner of such a 
trade-mark v/ould be afforded no protection in the courts. His 
trade-mark is not a trade-mark, because unlawful. 

Prom this consider at ion. and upon authorities referred 
to, I conclude that before any trade-mark can be entitled to reg- 
istry, it must be a lawful one, within the meaning of the general 
law upon the subject; and when it appears that the proposed trade- 
mark clearly and palpably tends to mislead and deceive the public 
as to the origin of the article of manufacture in respect of the 
place where, or person, or class of persons, by whom manufactured, 
the nationality or other quality or characteristic that would gov- 
ern the public or any considerable portion of the public in the 
selection and purchase of the class of articles to which it be- 
longs, it is an unlawful trade-mark, which would be refused pro- 
tection in the courts, and should be refused registration by the 
Commissioner of Patents. 



M. Bloch & Co., Sheet -14- 

No rule can be adopted, by which to be governed in its 
application to such cases of trade-marks* Each must rest upon its 
own circumstances. It may sometimes be difficult to determine 
whether the proposed trade-mark constitutes a misrepresentation. 
Perhaps doubtful cases should be resolved favorably to the appli- 
cants, leaving all persons affected to their remedies in the 
courts; but where the misrepresentation is manifest and undoubted, 
no registration should be allowed. 

The action of the examiner is affirmed. 






APPLICATION 

13 



Of 



FREDERI_C.K TURNER, 
Decided Jul?/ 11,1807. 

Reco r ded Vol* 54, Page 4C9 . 

oOo 

HALL, COMMISSIONER: 

The applicant presents for registry a trade-mar"-, which 
he alleges has been used by him since May 1, 1886, in commerce 
with Great Britain upon goods described as kid and. other gloves. 
It is printed upon labels to be attached to or is printed directly 
upon wrappers, boxes or packages. It consists of the figure of 
a glove oil which are printed large let ers "K" "L", between which 
is arranged a circle exterior to a triangle in which is placed the 
word "of" below the whole of which appears the word "Registered." 

This application was rejected by the Examiner for the 
reasons set forth in a decision announced June 9, 1887, in an ap- 
plication of ex parte Li. Bloch & Co.. It will be seen in that de- 
cision that the refusal to register the trade-Hark rests upon the 
misrepresentation contained upon the face of the trade-mark and 
the application as to the origin of manufacture and ownership* 

In the present case the applicant describes himself as a 



F. Turner, Shoot -2- 
citizen of Pennsylvania doing business at Philadelphia, out whether 
he is a manufacturer or only a dealer in gloves is not disclosed. 

It is fair to infer that the word and letters "K of L n 
refer to the association Known as Knights of Labor, and the circle 
enclosing the triangle may bear similarity to the seal of that or- 
ganization. But this is mere natter of reference. It is evi- 
dent that there is nothing in the design that points to any person ; 
association, or organization as the origin or owner of the article 
used in commerce. Only by "association", that is dealing with 
the article as one sold or handled by applicant, can the public 
ascertain that the origin or ownership is in the applicant. As 
it is alleged that the trade-mark has been in use since Hay 1,1886 
it is presumable that it has in this way obtained a limited re cog- 
nition. with the public, serving to point out and designate appli- 
cant as the origin. 

Is the mark an unlawful one, in view of what is said in 
ex parte M. Bloch & Co.? Does it distinctly and plainly refer 
the origin of the article to the Knights of Labor? I thin* not. 
There can be no doubt that it suggests that association, but not 
necessarily as the origin,- rather a catch word to emphasize and 
give prominence to the trade-mark. If this be a correct interpre- 



P. Turner, Sheet -3- 
tation to the trade-mark it is not vulnerable to the charge of 
misrepresentation, arid I feel bound to resolve a question of 
doubt in favor of the applicant, leaving the matter to be solved 
in the courts. 

It is not shown that any other person, association, or 
corporation owns this trade-mark or has applied the letters and 
circle as such to gloves as an article of commerce. In other 
words, this trade-mark is not shown to clearly resemble the trade- 
mark of another person so nearly as to be calculated to deceive. 
It is true that the Knights of Labor used the legend K of L and 
also a seal. But they cannot appropriate either the letters or 
any other symbol composed of a triangle and circle and so far mo- 
nopolize them for the purposes of a mere social or labor organiza- 
tion as to deprive other persons from their lawful and proper use 
as a trade-mark or otherwise. A new social organization might see 
proper to adopt as a name ,, Kings of Light", and use an abbrevia- 
tion "K of L B and have a seal similar to that of the Knights of 
Labor, and neither of the organizations would possess any prior 
or paramount right in the title or the letters. It is only when 
such title or letters are applied to property and represent good 
will in a specific business or denote origin in regard to the ar- 



F. Turner, Sheet -4- 
ticles in that "business that any rights of property arise* 

For the reason, therefore, that the trade-mark appears 
to be a lawful one, and is not Known to be so similar to any other 
as to be calculated to deceive, I conclude tc reverse the decision 
of the examiner and admit it to registry • 



APPLICATION 
of 

A E R R £ iL _£• HIIII5« 

Deo i clod July 25, 1887. 

Recorded Volo 35, page 15 . 

oOo 

HALL, CO; E 'I SSI OTTER: 

Applicant lias pending in the office an application for regis- 
try of a trade-mark. Since filing his application he has assign- 
ed an undivided one-half interest in the trade-nark to one Cleave- 
land, and asks to have the assignment admitted to record and that 
the patent isnue jointly to Spinner and Cleaveland. 

The Office advised applicant in effect that the assignment 
could not be admitted to record. The applicant now brings the mat- 
ter before the Commissioner and renews his request that the as- 
signment be recorded and that the trade-mark issue in the joint 
names of himself and his assignee. 

The legislation of Congress recognizes the right of property 
in trade-marks and the right to assign and transfer them, inde- 
pendently of such legislation. The trade-mark is registered , but 
not created in the Patent Office. Sec. 12, R.S., provides: 

-1- 



"The Commissioner of Patents is authorized to make rules 
and regulations and prescribe forms for the transfer of the 
right to use trade-marks, and for recording such transfer in 
his Office. " 

It will be observed that the language "for the transfer of 
the right to use such trade-marks", is not limited to trade-marks 
that have already been registered. Yet as the purpose of the act 
is to make the Office a registry for trade-marks it cannot have 
been the intention of the act to provide for the recording of as- 
signments of trade-marks generally, embracing all those not reg- 
istered and not intended to be. But it is not an unreasonable 
construction to hold that record of assignment was intended in all 
cases where the trade-mark is presented to and pending in the Of- 
fice for registry, as is the case with the present application. 

The Commissioner, however, in preparing rules and regulations 
seems not to have covered the scope of the act of Congress. Rule 
16, which is the only one upon the subject, makes no provision for 
the assignment of a trade-mark before it has been registered. The 
provision at the end of the Rule - "No particular form of assign- 
ment or conveyance is prescribed, but the trade-mark must be iden- 
tified by the certificate number," while not in express terms for- 



bidding record of an assignment not giving the certificate number 
of the trade-mark, declares that the trade-mark must be so iden- 
tified. This must mean that where the certificate of registry has 
been issued the assignment must identify the trade-mark by the 
certificate number. If the rule bears any broader construction it 
would probably conflict with Sec. 12, Act of March 3, 1881. 

I therefore hold that this trade-mark being in the Office for 
registry, though not yet registered, the assignment should be re- 
corded, if the description in the assignment is sufficiently cer- 
tain to clearly identify the trade-mark. 

But the request to have the trade-mark registered and the 
certificate of registry issued in the joint names of the applicant 
and his assignee, must be refused. Such a practice would involve 
fefehe proceedings in the Office in more or less confusion, and be a 
departure from the system and methods adopted in relation to the 
registry of trade-marks. It is not contemplated or penal tted in 
the Act of Congress, or the Rules of the Office. 



-3- 






f 

of" 
R A 1 1 1 k !• camp, 

Decided Sept. 7,1-30 7 , 

Recorded Vol. 55, Page 100. __ 

oOo 

VANCE, ACTING COMMISSIONER: 

It appears that applicant desires and applies for the 
registration of the word "Magnolia" as a trade-mark for flour, 
which is shown in connection with the flower of that name. The 
examiner rejected the application on reference to trade-mark of 
G. Swigart, under Act of 1C70 ^2,887, August 51, 1075, the words 
being "Magnolia Mills", in connection with the flower. 

The applicant's attorney contends that the trade-mark of 
Swigart is not a trade-mar&, because registered under a law pro- 
nounced unconstitutional by the Supreme Court. He is undoubtedly 
in error. A trade-mark does not derive its validity from regis- 
tration, but from its adaption and use, and the right to use a 
trade-mark is secured to one who uses it in mercantile or other 
pursuits by the common law. 

The syllabus in ex parte Lyon. Pupuy & Co.. 26 O.G.,191, 
is as follows:- 



D. w. Camp, Sheet -2- 

"1. No applicant may register a trade-mark unless he 

can establish, first, that he has the right to use it, and no - 
one else has; second, that it is not identical with the regis- 
tered or known trade-mark of another person, and beyond this 
he must show that he is us ins the trade-mark which he so owns 
in commerce with foreign nations or Indian tribes. 

"2. The statute does provide that the trade-mark sought 
to be registered shall be used in foreign commerce; but it 
does not in terms provide, nor in fair intendment convey the 
idea, that a party may acquire the right to use somebody. 
else's trade-marl-: merely by using it in such trade. 

"3. Where the records of this office disclose that cer- 
tain parties registered a trade-mark under the law of 1870, 
that such trade-mark was their property, chat they had been 
using it in this country for ten years next preceding the dat^ 
of their application for registration, and there is no evi- 
dence that they have ever abandoned such trade-mark, Held 
that section 3 of the Act of 1831 and the siprit of the whole 
statute authorize the Patent Office to take notice of the 
facts recited in said records in determining "the presumptive 
lawfulness of claims to the alleged trade-mark" by subsequent 
applicants for registration, and the examiner was justified 
in rejecting the application for registration on the facts 
disclosed in said record." 

This clearly shows the holding of the Office on this sub 

ject, and I think the holding entirely correct. I must therefore 

affirm the decision of the examiner. 



'I 

A £ 2 k I C. A T I,__0._H 
of 
S. lA^SFIELE & C. 0,., 

Dec i dol Oct. 18, 1837. 

Re cor del Vol. 5 5, Page 267. 

oOo 

VANCE, ACTING COMMISSIONER: 

The examiner of trade-mark refused to register the 
trade-mark "Honey", on the ground that honey is a well known vehi- 
cle for medicines, of ordinary use, and every body has a right to 
so use it. This is granted. Still I think that applicants are 
entitled to register their trade-mark, which is simply a notice 
to the world that the vermifuge bearing this mark is applicant's, 
so peo'ple con know that they are getting the genuine article - it 
bearing applicant's trade-mark. Any one, as I understand it, can 
use honey in medicines, but such an one cannot use applicants 1 
trade-mark. 

I think applicants are entitled to registe^their trade- 
mark, and therefore I hereby reverse the decision of the examiner 
o f t r a de-ma rk s . 



./. 






AZZLI c A T I ON 

of 

THE HOLLIE S & EPY.'ARPS SILVER COI.1PAIIY , 



Decided Ee c. 19, 1887 . 

Recorded Vol . 56, Fap. e 11 . 

0o 

HALL, COMMISSIONER: 

The object of this application is to secure protect ion 
for the word "Mexican", as a trade-mark whe: :,o plated or 
imitation silverware. 

Upon the authority of the case of the Delaware and Hud- 
son Canal Co. v. Clark, 15 Wall., 322, and exrarte M. Bloch & Co., 
40 O.G., 455, I affirm the action of the examiner of trade-marks 
in refusing the registration of this word as a trade-mark. In my 
opinion it would necessarily operate as a fraud and deception upon 
people who sought to deal with the subject-matter of the trade- 
mark the silver- are with which it was associated. 

Attention is called by counsel for the applicant to the 
case of Hoyt v. Hoyt, in the Court of Common Pleas for one of the 
districts in the State of Pen sylvania, where an objection was 
made to a trade-mark "German Cologne," as being forbidden by the 
principles of law and as operating as a fraud upon the public. In 



Holmes & Edwards Silver Co., Sheet -2- 

that oase the court says: 

"It was objected that the plaintiffs are not entitle:! to 
relief because the plaintiffs, by styling their cologne Ger- 
man Cologne, afe intending to impose upon the public, repre- 
senting thereby that their cologne is made in Germany. It 
would be as fair to presume that when a person advertises Ve- 
netian blinds he intends that the public should understand 
that the article is made in Venice, or that the defendants, 
in calling their article cologne, intend to pass it off as an 
article made in the city on the Rhine which gives it its 
name. There can be no just inference of a fraudulent intent 
from the use of such a designation, particularly when a man- 
ufacturer, as here, puts his name and the place of manufac- 
ture upon the bottles he uses." 

I do not see the pertinency of this authority, for the 
reason that the word w v"en£tian tt , when ape lie! to blinds, has lost 
all significance of the original locality in which such blinds 
were first male or used. It is no longer a designation of the lo- 
cality at which those blinds are made or from which they come, but 
of a specific construction, embracing certain qualities and charac- 
teristics. 

Evidently the sore "Mexican, " when applied to silver or 
silverware, has not lost otic": significance. It must either create 
the presumption that the silver employed is the peculiarly pure 
silver to be found in Meaiean mines, or that the ware itself was 
manufactured in Mexico. Not only this, but to my mind it has a 



Holmes & Edwards Silver Co., Sheet -5- 
direct, though not very strong tendency, to create the impression 
that the ware is solid silverware. 

Altogether my judgment is that the word ought not to be 
registered as a trade-marls:, and so I affirm the action or the pri- 
mary examiner. 






Of 

THE P E11BERT0 N & H ILL TOBACCO '.IAIIUj ACTURING CO. , 

Decided Dec. 25, 1887 . 

Recorded Vo l. 50, Page 28. 

oOo 

VANCE, ACT Ilia cqmmissicser: 

ister a s a trade-mark for the 
manufacture of tobacco the representation of St. Nicholas in a 
certain specif i£ form clearly set forth, and the word symbol "St. 
Nicholas." It appears that the word symbol "St. Nicholas" has 
already been registered by applicants. 

The examiner refuses to register applicants' trade-mark, 
and cited the trade-mark of Wemple, Base^son & Co., -;f!4,504, which 
represents "Santa Claus" driving a team of rein-deer, and the 
words "Santa Claus." The examiner also cites McCann v. Anthony, 
38 O.G.,page 535, as presenting a strong holding of the court a- 
gainst registering trade-marks liable to deceive the public. In 
that case, however, the color of the back ground in each trade- 
mark was the same, and the size and shape of the labels alike. It 
was held that different colored labels would have produced a dif- 
ferent result; that is, both trade-marks would have been proper 



Pemberton & Hill, Sheet -2- 

tr a do-marks for resist rat ion. 

In this case, the word "St Nicholas" and "Santa Glaus" 
are intended to represent the same character in the main, but 
"Santa Glaus" is driving his sleigh with the deer, and a pile of 
boxes are strapped to the sleigh, while"St. Nicholas" is on foot, 
a staff in his left hand and a Christmas tree on his shoulder. 
The trade-mark #14,304 is not colored, while applicants' is highly 
colored, 

If a purchaser should c? into a store and call for "St. 
Nicholas Tobacco," I hardly think he could be imposed upon by hav- 
ing "Santa Claus Tobacco" offered him, especially as one is highly 
colored and the other is not. 

I think applicants' ought to be allowed to register their 
trade-mark, and the decision of the is reversed. 



A£P L I C A T I OH 

of 

JAMES _JC^ BARBER, 

Deciderl Parch 17,1008 . 

Recorded Vol. 5G, Page 521 . 

oOo ■ — 

VATTCE, ASSISTANT COMMISSIONER: 

Applicant sought bo register under the act of 1874 a 
label for liniment, to wit: "Dr. Barber's Magic Liniment. 11 The 
examiner, in his letter of February 20, 1888, refused to register 
said label on the ground that the word "magic" is not registrable 
as a label, but it may be registered as a trade-mark. Applicant 
then peitions the Commissioner to review said decision of the ex- 
aminer for the purpose of allowing him to register Pis label. 

The examiner in his answer says that the word magic has 
been used in connection with medicines in an irrational manner, 
which is doubtless true. 

Applicant's attorney, referring to an article in Cham- 
ber's Encyclopedia, Vol. 6, page 253, argues that the word "Magic" 
was used in connection with medicines for centuries, and therefore 
must be public property. 

The holdings of the office have been in various cases 
that a label having arbitrary matter, which is registrable as a 



J. 1. Barber, Sheet -2- 
trade-mark, must first be registered as a trade-mark, and that the 
legal right cf an applicant to use it as a trade-mark must be 
first established before it ean be regis bored as a label. (Eee ex 
par te Park, CD. 1877, 45, and Goddilet, CD. 1874, 120, &c- ) The 
office has frequently admitted in trade-marks for registration the 
word "magic" as being an arbitrary word. 

In regard to the applicant's argument that the word 
"magic" is public property and cannot be registered, that, it 
would appear, depends on the special kind of medicine to which it 
had been applied. 

I think the examiner is right in his holding, and that 
applicant must first register as a trade-mark and then he can reg- 
ister his label. 

The petition is dismis 









/" ' " /" •" 

APPLI^ATlOl 
of 

OEPOEE COPPER COM£AIL 

Decided llarch 2C, 1G S8. 

Recorded Vol * 5C, Page 543. 

0O0 

HALL, COMMISSIONER: 

The applicant in this case socles to secure the registra- 
tion of a trade-mark upon copper ore in the shape of ingots. Ap- 
plicant says: 

"This trade-mark has been continuously in use "by said 
corporation since July 1, 1337, and by its predecessor in 
business since January 1, 1881, with the letters C.C, since 
January l, 1335, with the letters A 0, and since January 
1837, with the letters 0, E, C." 

I see no occasion to repeat the history of the case as 

it is stated and set forth in the answer of the examiner and in the 

brief of applicant. The difficulty grows out of the fact that 

the examiner regards the application in its present condition as 

indefinite and uncertain as to what applicant claims to be its 

trade-mark, and further that if the essential thing claimed, or 

capable of being claimed, as the trade-mark, shall consist simply 

of the letters employed and illustrated, then the applicant is in 

fact trying to secure in one application three different and dis- 



Orford Copper Co., Sheet -2- 
tinet trade-marks, which came into existence at different times 

and have been employee: respectively since then. 

The trade-mark which applicant seems to describe and to 
have in mind consists of the merchandise itself, in the form of a 
copper ingot with certain letters impressed upon it, the impress- 
ion being effected in the casting of the ingot. 

It is apparent that the statute relating to trade-marks 
requires that the trade-mark shall be a wholly separate and dis- 
tinct thing from the merchandise to which it is applied, so that 
in this case the ingot as a part of the trade-mark must be wholly 
eliminated from consideration and from the application. This be- 
ing so, it then follows that the different letters which are em- 
ployed upon the different ingots, which are said to be of differ- 
ent quality of metal, arc in bhemselves separate and distinct. 
They constitute three rather than one. However, the examiner has 
no authority to change any of the descriptions in the application 
or to regard an essential features of the mark anything except 
that which the applicant itself so regards. As a result of this 
the application is indistinct and uncertain, and the requirements 
of the examiner are that it shal i be rein i bine and certain 

Applicant in the brief has cited authorities to estab- 
lish the proposition that the place where the trade-mark is applied 



Orford Copper Co. .Shoot -5- 
upon the merchandise may be an essential feature of the trade-mark 
that the letters or the devices constituting he trade-mark should 
be located upon the end of a box rather than upon the side, or up- 
on the bottom rather than upon the top, or upon the left hand of 
ohe of the sides. Clearly the authorities do not support this 
proposition, because in the case of the Shaw Stocking Co. v. Hack, 
1?! Federal Reporter, 707, where the figures 33C were located upon 
the left side of the label, it will be seen that these figures oc- 
cupied a certain left hand relation in the label itself, and not 
#t all with reference to the box or package or merchandise upon 
which it might be placed; and so in this case the letters or the 
device which constitutes a trade-mark may be upon the feet or 
heels of the ingot or ui- ! on its side, or wherever the manufacturer 
is in the habit of placing it, .but wherever placed or in whatever 
relation, it is in no sense a pert of the merchandise, and the 
merchandise can in no way become a -art of the trad -mark. 

It seems to me that the views of the examiner are very- 
clear and specific. Applicant must so far limit and restrict the 
trade-mark as to confine it to its own essentials, and in this 
case the essentials can have no other existence than in the let- 
ters themselves, so that the letters in Figure 1, 0,11,, C, and in 



Orforcl Copper Co., Sheet -4- 
Figure 2, 0,A, and in Figure 3, 0,C, whatever may be their signif- 
icance as to origin or otherwise, arc not the same, and if one can 
be a trade-mark then each of the others can, and there are necessa- 
rily three, which of course could not all be claimed in the same 
application. The purpose :>f the examiner is to require the appli- 
cant to so amend and re-form his application as to confine it to 
that vh ich, as above indicated, constitutes the essentials -of a 
trade-mark. When that has been done, the examiner, if such be his 
judgment, can require division, and he can also, if he sees proper 
pass upon the novelty of the trade-mark, as to whether it has been 
anticipated, or is for any other reason not allowable. 

It seems to me that the case is made plain by these sug- 
gestions, and I think the examiner has made the proper require- 
ments, and see no other course than for the applicant to conform 
to them. 

The action of the examiner is affirmed. 






of 
JOHN H. MAGRUDER, 

Decided July 14,1888. 

Recorded Vol. 57, Page 54 8. 

oOo 

HALL, 'COMMISSIONER: 

The examiner has rejected this application for registra- 
tion of a trade-mark on reference to trade-marlv #3,2C6, registered 
December 7, 1875, in which the fac simile differs in many particu- 
lars, but in which the essential features arc declared to be the 
words "Jefferson Pure Old Rye Whiskey," while those in this appli- 
cation are described as the words "Jefferson Club", in connection 
with the medallion picture of Thomas Jefferson, 

Without enumerating the various features of trade-mark 
#3,206, I conclude that the medallion of Thomas Jefferson is the 
present application is so related to the words "Jefferson Club" as 
to distinguish it from the former, and I hold that applicant is 
entitled to register his trade-mark, at least so far as trade-mark 
#5,206 is concerned. 



4- 






A P P L I C A T I C IT 
ol 

IiIIiI£E P, £REPP & CO. } L 1 M J_ T_ K D . 
Dec ided July 10,1380. 

Recorder; Vol, 37, Pag e 592 . 

oOo 

HAL L , C OWn SSI OKI 5R; 

Applicant appeals from the action of the examiner in 
holding that the specification and. oath are not properly signed, 
as required by the statute and by the rules of the Patent Office. 

The application is made in the name of Kirher, Greer & 
Co., a firm domiciled and doing business in Belfast, Ireland. This 
company signs its name as"Kirher, Greer & Co., Limited, by"William 
Gr<.er, Director." Tne signature is attached by a stamp and the 
only real signature is --hat of William Greer, who signs as a "Di- 
rector of the firm." The oath as original:;' drawn was prepared 
so as to state that William Greer, being duly sirora, deposes and 
says that he is a member of - i rf Kir&er, Greer & Co., Lim- 
ited, but when he signed it the word "member" was erased and the 
word "Director" inserted, so that there is not only nothing in 
the specification or oath to show that this application was signed 
by a member of the firm, but there is much in it to indicate in- 



Kirker, Greer & Co., Sheet -2- 
ferentially that the person signing was not a member of the firm, 
"but simply a director or manager. 

The rules require an application made by a firm to be 
signed and the oath to be taken by a member of such firm, and in 
the present condition of this . l 1 e action of 
the examiner was correct, and it is affirmed, with the further 
suggestion that if within a reasonable time applicant's attorney 
shall be able to produce any statute of Great Britain showing that 
a limited co-partnership or association can only attach its signa- 
ture by a member of such firm or association, then the objection 
made by the examiner and affirmed by me, may be waived and the ap- 
plication may proceed for futher consideration. That is to say, 
if such be the law of Great Britain, the presumption will legally 
arise that although William Greer attached the firm name in this 
case as a Director, he is also a member of the firm. 






Aliliic at IM 
of 
£ H A R L E _S T. B R 0. VJ II , 

U Decided July 19, 1SS£ . 

Re cor clo d Vol. 57, Page 595. 

oOo 

HALL, COMMISSIONER: 

Applicant appeals from the action of the examiner in re- 
fusing to register as a trade-mark the following: The letters and 
words C. T. Brown, Danville, Va., arranged in circular form within 
a circle, with the letters and words C. T. Brown at the top and 
Danville, Va., at the bottom, and across the center of the cirle 
the words Craghead St., which is described as being a street in 
the city of Danville. 

These letters, as shown in the fr.o simile accompanying 
the application are the ordinary letters such as are in common use 
without anything to characterize them or distinguish them from 
Other letters. 

The examiner has held that there is nothing distinctive 
in this trade-mark, and has rejected it on no statutory ground, but 
simply for the reason that the name and address of applicant, 
printed in ordinary typo and in an ordinary way, do not constitute 



C. T. Brown, Sheet -2- 
a trade-mark, and consequently are not entitled to registration. 

It is well settled in the law of trade-narks that some 
thing of a distinctive character must exist in a trade-mark by 
which it may be distinguished from the same words or letters in 
other or similar use. A familiar illustration of this is the gen- 
uine or fac simile autograph of the party applying. There is such 
a distinctive character to each man's signature that although 
there should be two men of the same name in the same city and upon 
the same street, engaged in the same business, their respective 
signatures could, not only become the distinctive features of a 
trade-mark, but bankers and business men would not hesitate to 
transact important business upon the recognized distinctiveness of 
the two signatures'. 

Applicant has called my attention to section 5 of the 
trade-mark law, and also to an authority which he supposes sup- 
ports his claim in this case, but an examination of them will show 
that they constitute; a general discussion of the subject and are 
not directly applicable to the question involved in the present 
case. That question is clearly illustrated in the examiner's ans- 
wer where he says: 



C. T. Brown, Sheet -5- 

»lffotwithstanding this general doctrine, concerning which 
there is no doubt, the office has frequently registered the 
applicant -name or his name rrd address, when displayed in 
some fanciful or arbitrary form, and the essential feature 
is distinctively sot forth as involving such arbitrary form. 
Such an instance would be a fac simil e signature, or some 
peculiar method of printing distinctive in itself, as by 
special arrangement of color. Applicant's label has nothing 
of this character. The circular form is an ordinary one 
for bottle labels, having no mom peculiarity Lhan a square 
or oblong, and there is no distinctiveness about the label 
presented, other than results from the mere fancy of a print- 
er receiving an order to get up a batch of bottle labels." 

The action of the examiner is affirmed. 



Cr 

APPLICATION 






Of 

FRAN K L E A K E 



Decided Auc. 15,189 3. 

Recorded Vol. 33, Page 100. 

oOo 

HALL, commissioner: 

Applicant appeals from the action of the examiner refus- 
ing to register as a label for towels the words "The Athlete's 
Towel." This refusal was based upon the ground that the word 
Athlete is not used descriptively but is a fanciful term applied 
to towels, and should therefore be registered as a trade -marie. 
It is state:": by the examiner that applicant has also applied for 
the registration of the phrase "The Gymnast's Towel" as a label. 

The distinction "■ - a trade-mark and a label is so 
well defined that I cannot see how there should be any question as 
to the propriety of the action of the examiner. If the term ath- 
lete or gymnast has any significance or meaning by way of desig- 
nating the properties or qualities of the towel, it consists in 
giving the idea that it is a towel for the use of athletes, and is 
really more of the description of the person who is to use the tow 
el than of the towel itself. Any towel could, with equal propriety 



F. Lea&es, Sheet -2- 

be called an athlete's towel, however constructed and of whatever 
material, whereas, the purpose of a label is to have some refer- 
ence to the article labeled and to convey to the mind some concep- 
tion either as to its qualities, ingredients, or method of use as 
an article. 

The examiner calls attention to the fact that this dis- 
tinction has been practically carried out by the of: ice. 

The action of the examiner is affirmed. 






? 

APPLI C A T I Oil 
O ~ ~ ~ ~of~ 

sJ HIIS B. joos, 

P ecidcd Aur?. 17.18C8 . 

i^s^dV--^ V ol. 58, Page 155 . 

0O0 

HALL , COM! II SSI ONER : 

Applicant appeals from the action of the primary examin- 
er in refusing the registration of a trade-marl: for medicated 
troches on reference to the known trade-mar^ of C. White, #6 752 
registered October 22, 1078. 

Applicant's trade-mark consists of a heraldic represen- 
tation of an eagle displayed on a quadrilateral field and having 
upon its beast an oblong figure bearing the word "Von Graef". The 
trade-mark of White consists of a fanciful crowned eagle, if it 
may be called such, above which in plain type is printed "Dr. Aug. 
Keyser's Celebrated" and below the fig-ire - "German Elixir." 

While there is some slight resemblance between the two 
figures of the eagle illustrated in each, the arrangement is so 
unlike that in my opinion :io person exercising ordinary observa- 
tion would be deceived or led to believe that one was the other 
trade-mark. One is applied to a liquid, the other to troches, and 



L. B. Jones, Sheet -2- 

although both are used as sough, remedies or for affections of the 
throat, there is such a distinctivess in the general appearance 
and arrangement of the two that, in my opinion, they do not come 
within the rule relied upon by the examiner. 

This view of the case disposes of the merits and I am 
not called upon to consider the other question raised, viz: that 
the reference to the trade-nark of White is improper, owing to the 
fact that it was registered under the statute of 1870, which has 
since been declared unconstitutional. I have examined that ques- 
tion, however, and have 110 hesitation in approving the decision 
of the Commissioner in ex parte Lyon, Dupuy & Co,, C. D., 1884, 
29. 

The decision of the examiner is reversed. 



APPLJLC.ATI.O.K. 
of 
E H 0. C T J R & GAME L_E, 

Decided Au g. 17, 1888. 

Re oo r del Vol. 58, P age 156. 

oOo 

HALL, commissioner: 

Applicant appeals from the action of the primary examin- 
er in refusing registration of the word "Concord" as a trade-mark 
for soap. The refusal is based upon the general principle that 
a geographical name cannot, under ordinary circumstances, consti- 
tute a trade -mark. 

The applicant has called attention to a number of trade- 
marks in. which the distinctive feature is a geographical name, hut 

the examiner shows that generally, at least, in cases of that 

a 
character the word which is geographical name also has some other 

peculiar meaning or application which makes it an exception to the 

general rule. As illustrating the examiner's position he says: 

"It is true these names are or may be names of places, 
but there is not one of them which is not, to the ordinary 
American mind, a predominant significance quite apart from 
its geographical one. "Franklin" has its popularity as a 
geographical name from being the name of the great American 
philosopher and statesman; 'Columbia' from being the poetical 
appellation of the United States, and so the whole list might 
be run through. 'Magnolia 1 as a favorite flower; 'Buckeye' 



Proctor & Gamble, Sheet -2- 

a horse-chestnut; 'Excelsior 1 a Latin motto; 'Dixey' a popu- 
lar and fanciful designation for the South; 'Dickens' a noted 
novelist; •Murdoch 1 a noted tragedian." 

Following out this line of reasoning the examiner says 
that to an American familiar with the history of his countiy the 
word "Concord" is always pr ima facie a geographical name, recall- 
ing either the capital of New Hampshire, or the town in Massachu- 
setts of the same name, associated with the early scenes of the 
Revolution and with the world renowned school of philosophy, which 
hears its name; and it is safe to say that to nine persons out of 
ten in the United States its abstract sense hrs long fallen into 
desuetude. 

The word concord is a very common one in the English vo- 
cabulary, derived from the Latin. It has always been in use and 
has much the same meaning as the common word accord . It was in 
existence and in common use probably long before it has been ap-r 
plied as a proper name to any town or location, and if, as stated 
by the examiner, it has fallen into desuetude, that probably would 
be an additional reason why it might be a proper word to be used I 
and applied as a trade-marl:. The distinction between a term which 
designates a town, city, or locality and one which is simply fan- 
ciful is well illustrated in the case of Canal Company v. Clark, 
13 Wall., 511. 



P root or & Gamble, She t -3- 

Stzppose, however, that "before the terra Lackawana had 
"been applied to any town or location or had. any geographical sig- 
nificance, some venturesome pioneer had discovered and developed 
the coal of the valley which now hears that name and had applied 
the term Lackawanna as a trade-mark to his coal until it has ob- 
tained a reputation in the com .ercial world, and in the growth and 
prosperity of that business a town had crown up and taken that 
name, which wafi afterward applied to a large region of the country 
where the same character of coal was to be found. I think no one 
would contend that the trade-mark thus adopted could be affected 
by the subsequent application of that term to the town and local- 
ity. The same is true of any other terms that are cited in the 
list of trade-marks. 

In the present case the word Concord has its own origi- 
nal significance. In applying it as a trade— mark for soap that is 
used in foreign commerce or between this country and the Indians, 
it is applied without reference to its Lficance. 

There is noting in its definition that indicates the character or 
quality of the von.-?, and its application is wholly arbitrary and 
fanciful. Nov/, while it may be true that the use of this word may 
suggest to the mind of many persons the cities referred to, I do 



Proctor & Gamble, Shoot -4- 
not think it is really susceptible of such an application. The 
present applicant resides in Cincinnati, Ohio, which is the local- 
ity where his soap is manufactured. That is the place of origin, 
from which his business transactions proceed. There is nothing in 
the case, that I can, see, to indicate that the word "Concord" is 
used with reference to the localities which it might possibly sug- 
gest. It may sometimes be difficult to determine with precision 
whether the primary significance of a word is geographical or not, 
bit I think: in all cases of reasonable doubt the applicant should 
have the benefit of such doubt and his trade-mark should be regis- 
tered. I do not pretend to say but that persons living in a town 
or city which bears the name of Concord might be allowed to desig- 
nate their packages as having P. ut up at Concord, New 
Hampshire, or elsevmere, unless it should be apparent that they 
should apply the term in a manner to confuse their goods with those 
of an applicant who had registered the trade-mark Concord , but 
that is a question more properly for the courts than for the Com- 
missioner of Patents. 

I think the ruling of the examiner should be reversed 
and that the trade-mark should be registered. 



4 P P L I C A T I 0. H 

/ of 

SUSAN J. L G A K,_ 

Decided Cot. 8.133:1 . , 

Recorded Vo l, 58 , Pag e 272. 

O 0o 

VANCE, ASSISTANT COMMISSIONER: 

Applicant seeks to register as a label the words "Cali- 
fornia Vitaiizer." The primary examiner hold that the word "vi- 



talizer" is a coined word and is a trade-mark. He cites Frances 
& Mallon, CD., 1071, p. 203, an authority on the subj'ect of coined 
words for trade-marks. The examiner also cites Selehow v. Baker, 
95 N.Y. ,p. 59, to show that one who coins a word for a trade-mark 
is entitle'" to protection therefor, and the only way to protect 
it is by a trade -mark. 

sites ex parte Alden, CD., 1078, p. 
142, as an argument that the word "vitaiizer" is descriptive. 

In the case just cited the word was "Evaopratcd", which 
certainly is descriptive and is not registrable. 

Browne on Trade-Marks, section 219, says: 

"The coiner of a new word, employed oy him to designate 
an article made or on sale by him, may obtain such a right to 
that name as to entitle him to the sole use of it, as against 



S. J. Logan, Sheet -2- 

any others who attempt to use it for the sale of a similar 
article." 

He qoutes in support of this the case above cite:: by the 
examiner. 

It seems to me that the words "California Vital izer" 
constitutes a trade-marlc and should be protected in that way, and 
the decision of the examiner is afi'irmed. 



A P P L I C. A 1 I 1 
of 

PEHR SE BALMI K,_ 

Decided Pot. 3,1888. 

Record., d Vol. 58, Page 27S , 

oOo 

HALL , COMMI SSI OHER : 

Appeal is taken from the examiner's refusal tc register 
the word "Kephaline" as a trade-mark Tor a rarely for neuralgia 
and headache. This refusal is based on the trade-mark of n.P.Thay 
er c°: Co., of Boston, Llassaehusetts, for which application was fil- 
ed Hay 13,1880, in which the word "Cephaline", spelled with a _C, 
in connection with the Greek word jjf£f^£" was claimed, and a use 
declared for threo months prior to the application* 

In his letter of August 22, 1CSC , the examiner said: 

"In view of the universal practice of using the English 
C and K as equivalents for the Grei k Xap~a , it is held that 
applicant's alleged trade-mark is identical with Thayer's. 
Nothing in applicant's statement indicates that the remedy to 
which he applies it differs from Thayer's in form or charac- 
ter. Such difference, however, would not affect the merits 
of the case, both being applied specifically to a headache 
remedy. If Thayer found it expedient to out up his remedy 
in liquid form he would have perfect liberty to do so." 

It is true, as said by the examii.er, that there is noth- 
ing in the present applicant's statement which indicates that the 
remedy to which he applies it differs from Thayer's in form or 



P. Baldwin. Shoot -2- 
character, except as it appears from the printed matter on the 
trade-mark itself, from which it is evident that this is a liquid 
preparation, to be applied externally to the affected parts, and 
it appears that the medicine to which the trade-mark of Thayer & 
Co. is applied is a powder to be taken internally. 

My decision in this case will proceed upon the statement 
made by the present applicant that he Trill amend his application 
so as to specify the differences just pointed out, viz : that the 
present medicine is a liquid to be applied externally to the parts 
affected. While it may be true that the words "Kephaline" and 
"Cephaline" as employed in these two trade-marks are practically 
identical, it does not follow that they may not both be taken out 
as trade-marks by different parties, if ^hcy are to dif- 
ferent articles in such a way that there will be no reasonable 
danger that the one may be mistaken for the other. In order to 
determine whether there is any such danger the nature of a trade- 
mark must be borne in mind. It must have be n used as a trade- 
mark applied to the particular kind of goods to a sufficient ex- 
tent to permit those using it to become familiar with it and to 
possess some power of identification. No person can be supposed 
to be deceived by a trade-mark in its application to an article 






P. Baldwin, Sheet -5- 
who has never used the article or seen the trade -mark and who has 
no Knowledge upon the subject. 

"Suppose a woman suffering with neuralgia sends a child 
"or servant to the drug store or write a hast:' note to the apothe- 
cary for h^r favorite headache remedy, which of these two would 
"she be likely to get?" Of course if a .person sending for an ar- 
ticle either by messenger or note describes it insufficiently or 
pays so little attention to the subject as not to distinguish be- 
tween the character of articles received, he or she may be deceiv- 
ed, but when it is understood that in the one case the remedy is a 
powder prepare:;, in packages or otherwise a;; powders usually are, 
to be taken internal y and not externally, and in the other is a 
liquid preparation to be applied externally and not internally, it 
is difficult to imagine that any person who has any familiarity 
with either one of the medicine-: could mistake the one for the 
other in consequence of the use of this trade-mark. 

In other words, a case is ;ed of the use of the 

same or very nearly the some trade-mark on two different articles 

or classes of roors, and the mere fact Ghat these remedies are 

used for headaches does not at all change the proposition. 

It may be that this is a very close case, but in my judg- j 
ment the applicant should be given the benefit of the doubt, and 
upon his filing the amendment suggested I think his trade-mark 
should be registered. 



■7/r - rw 

of 
^.ROGERS & IRVI 1,_ 

Decided Cot. 17. 1038 , 

Recorded Vol. 58, Page 298 . 

oOo 

VANCE, ACTING C CLU.II SSI C NER : 

This case being set for hearing at Twelve o'clock this 
day, and no one appearing to argue it, I take it for granted that 
it is submitted on the petition and argument filed in the case. 

Applicants seek to register the word "Atlanta" as a 
trade-mark for pills. The examiner refused to register said trade 
mark on the ground that the word "Atlanta" is geographical. Ap- 
plicants urge that the examiner stated in his letter of August 9, 
1888, that the Commissioner had under his advisement a parallel 
case, and he (the examiner) would hold his decision until after 
the decision in that case. The case referred to appears to have 
been ex parte Proctor & Gamble, Ms. decisions Vol. 38, p,136, and 
the word sought to be registered by them was "Concord". The exam- 
iner rejected the registration of that word on the ground that it 
was geographical. The Commissioner reversed the examiner, holding 
that the word had other meanings besides a "geographical" signif- 



Rogers & Irvin, Sheet -2- 

icanoe. Applicants hold that the two eases are parallel, and urge 

the registration of the word "Atlanta." 

I do not think that the cases are exactly on all fours. 

I do not find that the word "Atlanta" has any other significance 

than a geographical one. "Atlantes" is represented as one of the 

old family of gods, who hears up the pillar of heaven; "Atlantic" 

is the name of the ocean between Europe and America; and "Atlanti- 

des, n the name by which the Pleiades were sometimes called. The 

foregoing names do not tally with "Atlanta." 

The examiner says, "Applicants cannot exclude any apoth- 
ecary in Atlanta from putting up pills of his own make nor 
from designating them as made there, nor from their becoming 
known popularly as Atlanta Pills as distinguished from Phila- 
delphia or Gt. Lett is Pills. Hot being able to do this the 
exclusive right which is essential to trade-mark property is 
lacking. " 

This seems to bo a proper holding, if the word "Atlan- 
ta" was used in arbitrary sense and not geographically, it would 
doubtless be registrable. How is that to bo determined? The mere 
statement of applicants to that effect is not stiff icient. The 
fact would still remain that Atlanta is a city and that any drug- 
gist there would have a right to make and sell Atlanta pill s. 
The law may then be stated briefly, no one can lay exclusive right 



Rogers & irvin, Sheet -3- 
to a trade-mark, the ^rds or character of which nay be used by 
another on his own merchandise. (Delaware and Hudson Canal Com- 
pany v. Clark, 1 O.G., 279. Armistead v. Blackwell, I 0. G., 
603.) The name of a town cannot be appropriated as a trade-mark. 
The decision of the examiner is affirmed. 



l/ 9, 



AlZil C A| I II 
of 
ffi- 2- J. G. K N I G H Tj, 

s\^ Dec idea Cot. 25. 1888 . 






Re oo r clod Vol. 58, Par,e 541 . 

O 0o 

HALL, COMMISSIONER: 

Appeal is taken from the examiner's refusal to register 
the words "Rough on Dinner" as a trade-mark for medicinal bitters. 
This registration was refused on reference to registered trade- 
mark #10, 86G, of E. S. Wells, dated January 22, 1334, in which the 
words "Rough on" are claimed as a tr : For proprietary reme- 
dies or compounds, of which a large number are specifically recit- 
ed. The Wells trade-mark covers a class of articles known as me- 
deicnal or toilet compounds. There is no question but that the 
subject-matter to which the present trade-mark is applied is a me= 
dicinal compound 1 and would come in conflict with the trade-mark to 
Wells, unless the Wells trade-mark is broader than is authorised 
by the statute. 

I have made careful inquiry and I find that in the class- 
ification of the Office and also by the well-recognized rules of 
law it is entirely proper for the trade-mark of Weils to be applied 



W. R. J. G. Knight, Sheet -2- 
to so broad, a class as that embraced within the terms medicinal 
and toilet compounds , especially if the trade-mark employed has 
been largely applied and thus obtained general recognition in the 
trade This is unquestionably true of the Wells trade-mark 
"Rough on", as applied to a great variety of medicinal and toilet 
compounds . 

There is no doubt that the trade-mark applied for by ap- 
plicant is practically the same. Though the word "Dinner" is ad- 
ded, and the applicant claims the; words "Rough on Dinner", it is 
apparent that it is so similar to the trade-mark of Y/ells as to be 
calculated to deceive the public. 

I think therefore the action of the examiner was correct 
in rofusing registration, and it is affirmed. 



^JL 






AZZIilCAT I OH 
of 



Decided Nov. 30, 1888 . 

Recorded Vol, 58, Page 428, 

— _ O 0o 

VANCE, ACTING COMMISSIONER: 

The primary examiner declined to register the label bear- 
ing the words "Waiora or Fount of Life," and the monogram composed 
of the letters "A. L. P. ", together with the descriptive matter, on 
the ground that fancy names, monograms, and trade-marks are exclu- 
ded from registration as labels. The holding of the examiner is 
correct « 

It is first necessary for applicants to register their 
trade-marks before it can be registered as a label. 

Says Commissioner Doolittle in w. Simpson & Sons, 10 C. 
G., 335. 

11 The law establishing the registratiorJbf labels distinc- 
tively sets forth that only those prints and labels not trade 
marks may be registered in the Patent Office upon the payment 
of the fee of six dollars. The provisions of the trade- 
marl: law as uniformly construed are radically and essentially 
differnt from those relating to labels. 

There is no reason why the Office should adopt a prac- 
tice which will lead to confusion and uncertainty in regard 
to these matters. If the law made no distinction between 



A.L.Plonegeon, Sheet -2- 

tra de-marks and labels, still, so long as it prescribed fees 
for their registration, the Office would be bound to estab- 
lish a clear distinction between the two for its own guidance 
and the information of the public. 

Now, the definition of the word "label" as given by 
Webster's Dictionary, and which has been adopted by this Of- 
fice in the matter of their registration, is as follows: 

•A narrow slip of silk, paper, parchment, etc., affixed p 
to the label of a bottle or a package. 1 

"The same author defines a trade-mark to be - 

! A distinguishing mark or device by a manufacturer on 
his goods or labels, the legal right in which is recognised 
by lav/. ' " 

It will be seen that the Office has held that a label 
merely sets forth what is in a bottle or package, and who is the 
owner thereof, while the trade-mark is the peculiar mark of a man- 
ufacturer, which notifies the public that the goods are of his moke 
and that his legal right to the trade-mark is recognixed by law. 
It is very clear that applicant must first register his trade-mark 
and then he can register his label. 

In John D. Park, 12 O.G., 2, it was held: 

"Arbitrary matter properly constituting a trade-mark 
must be registered as such before it can be included in a 
label." 

In the C. A. Yale Cigar Manufacturing Co., Limited, v. 
v. C. A. Yale. 30 O.G.,27, Acting Commissiner Pyrenforth held as 
follows: 

"A print or label registration, whereof a certificate is 



A.L.Plonegeon, Sheet -3- 

given by the Commissioner of Patents, is in the nature of a 
grant to the owners of any new print or label of the exclu- 
sive right to the same. But no such print or label oan be 
registered unless ir properly belongs to an article of com- 
merce, and is as above defined; nor can the same be register- 
ed as a print . r label when it amounts to a lawful trade-mar& 
or when its use in connection wit i article : . ? r hich it is' 
applied is arbitrary jt fanciful. The benefits of .he ict 
authorizing the registration of prints or labels seen to have 
been confined originally to citizens or resdients of the Uni- 
ted States, but appear to be extended to British subjects and 
the subjects of the German Empire by existing treaties." 

Applicant contends that he cannot register a trade-marl; 
as he has no trade with foreign nations, or the Indian tribes. 
That, however, is not involved in the question as to what he reg- 
isters as a label. If what he desires registered is a trade -mark, 
and such it is held to be, that is the fact the Office must no- 
tice. 

The decision of the Examine i is affirmed. 



A P P L I. C. A T I K 
Of 

R£GERS & I R ¥ I K, 

Decide d Nov. 22,1883, 

Recorded Vol. 58, Paree 457 . 

eOo 

VAHCE, ACTIITG COMMISSIOHER: 

I hav .ned the petition for re-hearing, and am in- 
clined to grant the same, not because ap Li cants have satisfied me 
that their trade-mark is registrable, but rather on account of the 
reasons given why they were not present at the hearing, 

I have not examined the authorities quoted by the appli- 
cants, which co to support their statement that the word "Atlanta" 
v/as in use at the date of Homer's residence in Greece, but that 
question can be loo&ed into at ring. 



e. 



APPLI.CAT.XOTr 

of 
J. I COLE & CO., 

Decided Nov. 24,ice c a 

Recorded Vol, 58, Page 457. 

0O0 

VANCE, ACTING COMMISSIONER: 

The primary examiner refused to register the word "Car- 
bolisoap" as a trade-mark, claimed by applicants, as the word "Car 
bolic" had already been register as a trade-mark for soap. This 
is undoubtedly a correct decision as the words are so nearly alike 
as to be deceptive. 

In the case of Coggin, Kidder & Co., 11 O.G.,1100, it 
is cited in the syllabus that, "Registration denied a trade-mark 
"which, although, not absolutely identical with, was so close in 
"its resemblance to another in long use as to readily mislead the 
"public." But the applicants uioe that the registration of the 
trade-mark of Buchan & Co., #1,748, registered April 28, 1874, was 
void, because the lav; under which it was registered (1870) was de- 
clared by the Supreme Court, unconstitutional and therefore the 
registration of that trade-mark could not be cite:, as a reference. 
This argument is not tenable. Admitting a doubt as to the propri- 



J.W.Cole & Co., Sheet -2- 
ety of registering the trade-nark set forth, the work was done by 
the Office, and the Office cannot undo its work. 

Commissioner Leggitt, in the case of Armistead v. Black- 
well, C. D., 1072, 128, held that the registration of Blackwell's 
trade-mark for the Durham smoking tobacco was illegally registered 
and then adds: "If I had power to cancel the certificate granted 
"to Blackwell, I should certainly do so." 

The very question under consideration came up in ex par - 
te Lyon, Dupuy & Co. ,28 O.G., 191. Acting Commissioner Dyrenforth 
in that case held as follows: 

"It is said that I am giving the registration under the 
law of 1070 the sane forfce and effect as if it had been made 
under the statute of 1881. This is palpable error. I find 
here in this Office a public record - public in the sense 
that it is open and nototious, and may be seen and read by 
all men - in which is recorded a fac simile of trade-marks, 
with a full statement of ownership, and period of use, &c, 
all under the sanction of an oath. This public record disclos- 
es that Imbs, Meyer & Co., in 1876, registered a trade-mark, 
proved that it was their property; that they were using it 
attached to flour; that they had be n so using it for ten 
years next proceeding the date of their application for reg- 
istration. How I do not hold that the registration has the 
force and effect of a registration made under the present law. 
Nothing of the hind. But I do hold that I am properly author 
ized under the provision of section 3 of the act of 1881, and 
by the true spirit and intent of the whole statute, Y/hich is 
to prevent and not to connive at fraud and imposition, to 
take notice of the facts recited in that record, in determi- 
ning "the presumptive lawfulness of claim to the alleged 
trade-mark 1 by the applicants. I hold, therefore, that the 



J.W.Cole & Co., Sheet -3- 

Examiner was clearly justified in rejecting applicant's pe- 
tition of registration on the reference of Imbs, Meyer a Co., 
which disclosed that they were and had been for many years 
using that identical trade-mark, or one substantially the 
same, on flour, that they had been so using it for a long 
time before the applicant's claim to have known of it or 
sought to use it." 

In .S* Parte Daniel ¥. Camp, Ms. Decisions, Vol. 35, 169, 

it was- held: 

"Applicant's attorney contends that the trade-marX of 
Swigart is not a trade -mark, because registered under a law 
pronounced unconstitutional by the Supreme Court. Pie is un- 
doubtedly in error. A trade-mark does not derive its validi- 
ty from the registration but from its adoption and use, and 
the right to use a V ado-mark is secured to one whotases it in 
mercantile or other pursuits by the common law." 

The decision of the Examiner is affirmed. 



; 



AlZilC ATI CI? 
of 
RO MM & IRVIS, 



Decided Deo. 14, 1880 . 

Recorded Vol. 59, Page 25. 

oOo 

VANCE, ASSISTANT COMMISSIONER: 

I granted the motion Tor re-hearing, on the ground that 
applicants did not appear at the regular hearing. I decided in 
my decision of October 17, 1088, that the trade-mark of applicants 
was not registrable, because it is a geographical term. It is now 
urged that the word has other significance "besides a geographical 
one; that "Atlanta" is the accusative form of the word "Atlas" in 
the Greek and Latin tongues, "Atlas" being the ancient God of my- 
thology; and that the word was in common use in the days of Homer, 
centuries before Christ, 

In ex parte Proctor & Gamble, Ms. decisions, Vol. 38, p. 
136, applicants desired to register the word "Concord" as a trade- 
mark. Commissioner Hall said: 

"It was in existence and in common use probably long be- 
fore it had beer applied as a proper name to any town or lo- 
cation, and if, as stated by the examiner, it has fallen into 
desuetude, that probably would be an additional reason why it 
might be a proper word to be used as a trade-mark." 



Rogers & Irvin, Sheet -2- 

Upon careful consideration and. examination, I am satis- 
fied that the word "Atlanta" was used in the accusative form, as 
suggested by applicants. 

Commissioner Hall also held that where there is a doubt J 
as to a word being exclusively geographical, it shall be resolved i 
in favor of the applicant. Upon the whole, as the word Atlanta 
seems to have been used previous to the calling of a city in 
Georgia by that name, under the ruling of Commissioner Hall in the 
case cited, I declare my decision of October 17th last vacated, an 
and reverse the decision of the primary examiner* 

The trade-mark will be registered. 



- 



APPLICAT 


ION 


of 
DAVID K I 


N G, 


Decided. Dec. 17, 


,1888. 



•? i Recorded Vol. 50 , Page 65. 

. _ z 

' ooo- ----- 

HALL, commissioher: 

Applicant has presented as his trade-marls for writing 
paper a design which he uses as a water nark, consisting essential 
ly of the letters "G.A.R.", and the representation of an eagle, a 
flag, and a star. It is proper to add that this design, which the 
applicant claims to have applied to his goods as a trade-mark, is 
an exact representation of the well-known badge of the Grand Army 
of the Republic; although the applicant has in his argument at- 
tempted to draw some distinctions between the trade-mark exhibited 
by him and the badge of the Grand Amy of the Republic, there can 
be no doubt that the similarity is such that the distinctions al- 
luded to make no difference whatever. 

This application for registration has been refused by 
the examiner, for the reason that the design has been heretofore 
adopted and employed by the Grand Army of the Republic upon badges 
worn by its members and has been printed as a letter-head upon the 



D. King, Sheet -2- 
writing paper used by that organization in its correspondence. The 
examiner has also insisted that this design, when applied by way 
of a water mark upon the paper, embellishes and consequently en- 
hances the value of it, and thus, having another use than that of 
a trade-mark, is not the proper subject of a trade-mark registra- 
tion. It is also proper to add that heretofore this design was 
patented as a design, but the term for which this security was ob- 
tained has expired so that it is no longer protected. No objection 
is made to its registration on account of the fact that it is in- 
corporated in the paper as a water mark in the process of manufac- 
ture, for it is concluded that the water mark is one of the ancient 
and well-known means of applying a trade-mark to writing-paper, and 
no reason is conceived for objecting to it on that ground. The 
question then arises whether the facts stated above constitute a 
proper and legitimate bar to the employment of this design in its 
application to interstate commerce as a trad-mark. 

The fact that this proposed trade-mark may be said to be 
a design, I think can make no possible difference. The records 
of the of i ice contain a multitude of trade-marks which are designs 
in the sense that they are fanciful pictures and illustrations, and 
it matters not how incongruous or meaningless a design may be, it 



tfc 



D. King, Sheet -5- 
still, within some limits and restrictions, can be the subject of 
a trade-mark. 

It is conceded that this design has never been used as a 
trade-mark by the Grand Army of the Republic or by any other per- 
sons, either in local trade, interstate commerce, or commerce with 
foreign nations. As is said by the examiner, in a supplement to 
his statement, this design has become a matter of public knowledge 
and use, so that it is no longer capable of being exclusively ap- 
propriated in the ordinary sense as property. It has fallen into 
the mass of fanciful designs which may be employed by every per- 
son in any appropriate and lawful manner. The applicant in this 
case claims to have thus found it the subject of lawful use and 
has so far appropriated it and applied it as a trade-mark to a 
certain class of merchandise in a proper and legal manner. His 
doing this in no manner interferes with its proper and lawful use 
by all other citizens and persons. The Grand Array can still use 
it in precisely the same manner in which it has heretofore been 
used, upon the badge of the members and upon the paper which they 
use in their correspondence, whether such paper is manufactured 
by this applicant with the trade-mark incorporated as a water mark 
or whether the paper is entirely different in respect of contain- 
ing no water mark whatever. So any other persons that the members 



D. King, Sheet -4- 
of the Grand Array of the Republic can employ this design upon oth- 
er materials than paper, and I see no reason why.it may not be em- 
ployed as a trade-marl: when applied to any other class of merchan- 
dise to v/hich it may be properly appropriated. The examiner con- 
cedes that this could be done. If a manufacturer of carpets saw- 
proper to have this design woven in his carpet, certainly no ob- 
jection could be raised against it. The design could also be 
printed upon wall-paper as an ornament simply for the reason bhat 
not being the subject of a copyright and not being secured by any 
law applicable thereto, it is capable of general and universal use. 
The trade-mark provides that when an individual has obtained or 
delected, either by his own ingenuity or by appropriating that 
which he finds existing in public knowledge, a device or design, 
and has applied it as a trade-mark to a class of merchandise which 
he is using in commerce with other nations, he shall be entitled 
to have such trade-mark registered and to receive the protection 
which the law given; to a trade-mark. This of course depends upon 
whether he is the first to have thus applied that device or design 
upon that class of goDds which is the subject of foreign commerce. 

In the present case the applicant has complied with the 
statute and filed the necessary affidavit asserting himself to be 



D, King, Sheet -5- 
the first person who has adopted this design as a trade-mark in 
foreign commerce. There is nothing of record or in the statement 
of the examiner intimating that the Grand Army of the Republic or 
any organization or person has ever thus applied this design. I 
have already stated how the Grand Army of the Republic has used 
this badge or design; that use has been of such a character that 
no property in it remains with such organization, for its members 
have published it to the world. It seems that at one time they re 
tained a property in one of the methods recognized by law, viz; by 
a design patent. The period of that security has expired. Had 
that organization been engaged in the manufacture or sale of paper 
or any other merchandise or commodity, and se^n proper to apply 
this design to that class of merchandise as a trade-mark, they 
could have been secured in its use and enjoyment in the manner pro- 
vided by the trade-mark law; but, as already stated, they have nev, 
er engage! in such manufacture or sale, nor have they attempted to 
secure a property in the design in the manner set forth. They 
have, however, published the design to the world, both in their 
use of it and by their design patent, Just as manuscripts and the 
results of thought are donate", and given to the public by. the or- 
dinary and usual publication and public use, when such public use 



D. King, Sheet -6- 
and publication are not guarded and protected by not conforming to 
the copyright law. There is, however, no property in the design 
itself, vested in any one. 

The applicant in this case in selecting the desig:; under 
consideration from what the examiner may term the worthless rub- 
bish abandoned by its owner, the materials of dust heaps and ac- 
cumulations, has acquired no property in the thing; and it is only 
by this new application of the design as a trade-mark to a certain 
class of merchandise that it newly acquires the quality of proper- 
ty, and becomes invested in him who firs : makes such an applica- 
tion of it. I can conceive that there is no more reason why the 
applicant should be denied, his right to a trade-mark under these 
circumstances than if he had selected some fanciful design which 
might have belonged to the order of St. John, or that had existed 
two or three centuries ago, the only condition being that having 
selected it he has applied it as a trade-mark to merchandise in 
foreign commerce, as required by the statute. 

It is said that the seal of the government belongs to 
all persons in the sense that no one can acquire an individual 
property in it or apply it as a trade-mark. I see no occasion to 
discuss that question now; but, as to mere emblems which have been 



D. King, Sheet -7- 
used by societies, it seems to be settled by the decisions of the 
office that there is no sanctity or sacredness about them which: 
precludes their being used and applied as trade-marks. 

Attention has been called to the case of _ex parte Tolle, 
2 O.G.,415, but the later case of ex parte Thomas, 14 O.G.,821, 
CD, 1878, 113, seems especially- to overrule the former one. The 
Commissioner in this later decision says: 

"I cannot agree with the doctrine of that case (ex parte 
Tolle). There is no law giving to the Masonic fraternity a 
monopoly of the symbols used by them, and I see no reason why 
this office should not hold in the same respect the symbols 
and emblems of the Odd Fellows and of other secret societies, 
and the particular emblems used by certain religious organ- 
izations. 

"In regard to the character of the deception that might 
be caused by the use of such symbols on manufactured goods, 
the decision cited is silent. It is inferred, however, from 
a careful perusal of the opinion, that the public might be 
led to thin": that the manufacturer using the mark was a I.iason 
when he was not; or that being a mason, his goode were of 
first-rate quality, when, in truth, they were very. poor. 

"On consulting the statute, however, I find nothing at 
all indicating that the function of a trade-mark is to point 
out the character or social standing of its owner or the qual 
ity of his goods. Nor is there anything in the office rules 
requiring us to apply any tests of this kind. The sole and 
independent office of a trade-mark is to distinguish the good 
of one person from the same kind of goods made or r?old by an- 
other. The relations to society the manufacturer bears or 
the peculiar quality of his goods are determined by the pub- 
lic in other ways** 

It is proper to say in this case that I do not find, nor 



D. King, Sheet -8- 
does the examiner suggest, that the design as used would be calcu- 
lated to deceive, and the case is not brought within the princi- 
ples announced in ex parte M. Bloch & Co., 40 O.G., 433. 

It is suggested thatlif this trade-mark is allowed to be 
registered the members of the Grand Army of the Republic would be 
precluded from using the design or symbol in the manner in which 
they have heretofore used it. Evidently this is a misapprehension. 
As stated above that organization will have precisely the same 
right to employ this design upon its badges, even if the badges 
could be regarded as articles of merchandise, and also to imprint 
it in the manner heretofore done upon paper used in correspondence 
whether that paper contains the v/ater marl: or trade-mark of this 
applicant or is common and ordinary paper. But, it is said, sup- 
pose hereafter the Grand Army desire to manufacture paper or to 
use paper in which its members have caused this water mark, their 
own symbol, to be impressed, would they not be regarded as infring 
ers of the trade-mark thus registered by the applicant? It will 
be seen at once that whenever the Grand Army of the Republic enter 
upon the manufacture or sale of paper and attempt to employ this 
symbol as a feature of that paper, they embark in a new business 
and attempt to apply this design to a new use. So also if they, 



D. King, Sheet -9- 
instead of engaging in such manufacture or sale for the purpose of 
supplying themselves with this kind of paper or induce others to 
manufacture and engage in the sale, then such other persons would 
themselves begin the manufacture and use of a quality of paper and 
the employment of this design in a use to which it had not hereto- 
fore been applied. Whether such a use; of the design would consti- 
tute infringement of this trade-mark depends upon a number of im- 
portant questions. 

Firs t: Would they employ it as a trade-mark? 

Secon d: Would such trade-mark be applied in foreign commerce 
or inter-state commerce or in local trade only? 

Finally : Would such use be simply a matter of embellishment? 
In either event it wovuld be an entirely distinct and new 
application of the use of tftis design by the Grand Army of the Re- 
public or by such persons as such organiztion should employ or in- 
duce to enter into the manufacture and sale of such paper; and, 
when the Grand Army or such other persons began this new use of 
the design, they just take it subject Ig the rights of other par- 
ties accrued prior to this new use and application This is the 
condition in which every person finds himself placed when he ap- 
plies for the registration of a trade-mark.. If some other party 
has previously used the trade-mark and has registered it an inter- 



D. King, Sheet -In- 
ference follows and the office decides which one first, properly 
applied the design to the sane class of goods; or if the question 
arises in the courts, the courts settle the tights of the parties, 
depending upon which one first applied the design as a trade-mark. 

I am not able to see that the Grand Army of the Republic would oc- 

or 
cupy any other. different position. The mere fact that Lhey were 

the originators of the design or the authors of it, in my opinion, 
would make no difference whatever, for the reason that they have 
donated this design to the world to be used in all the ways in 
which the design is capable of use and have retained no proprieta- 
ry right in themselves; and in that condition the trade-mark qual- 
ity, which follows the application of the ddsign to merchandise 
belongs to him who- first applies it to that particular purpose. 
Then as to the question whether the Grand Army would 
have the right to embellish their paper with this design by means 
of the water mark: Whether they would have the right to do that 
depends entirely upon whether it would be an infringement of a pre- 
viously registered trade-mark in which the same design was employ- 
ed by means of the water mark. If it were used solely for embel- 
lishment, and was never used in coirimerce, and was employed by the 
members of the Grand Army exclusively, it probably would not pre- 



•*% 



D. King, Sheet -11- 
sent a ease of infringement, unless the courts should find that 
its use operated to deceive the public and induced it to purchase 
a particular Kind of paper, used and thus embellished by this or- 
ganization, upon the supposition or belief that it was the paper 
of the character and quality manufactured by the app] ider 
his trade-mark. In such a case the courts would probably hold 
that there was an infringement. 

The examiner has made the objection that this trade-marlc 
embellishes the paper and thus adds something to its intrinsic 
value, and that whatever possesses this quality cannot properly 
be made the subject of a trade-mark, and several cases are cit.ed, 
but I do not think such cases support the proposition in its ap- 
plication to the present case. The proposition which lies at the 
foundation of this case is that a trade-mark may be impressed upon 
each shoot of paper as a water nark; and I think it may be safely 
said that scarcely any trade-mark can be or would be thus applied 
without incidentally embellishing the page or the ::aper to a great 
er or less extent; but if the design itself is the proper and le- 
gitimate subject of a trade-mark, is not prohibited by law or con- 
trary to public morals or public policy, the fact that it incident 
ally embellishes the page on which it appears cannot deprive it of 



D. King, Sheet -12- 
its lawful quality as a trade-mark, and I do not think that objec- 
tion is well taken under the circumstances. 

There are several affidavits f i lei in the record in which 
this particular feature of the water nark is set out, and it is 
undoubtedly true that paper of a suitable quality containing this 
water mark might be particularly acceptable to members of the 
Grand Army; but the trade-mart is sought to bo registered for its 
use in foreign commerce; and the affidavit of the applicant as- 
serts that it has been thus used, although not to any great ex- 
tent as yet, and it is in the direction of such employment that 
the registration is allowed. The Patent Office is not constituted 
nor has it the means to investigate the question whether the ap- 
plicant in the present application is simply seeking to obtain the 
guise of security around his trade-mark when he really means to 
use it as an attractive embellishment for a particular class of 
persons in this country. I feel that the office is bound by the 
affidavit and that in that respect the affidavit of the applicant 
cannot be controverted. Such a question as that must be settled 
by the courts. 

In conclusion, the case is one that has given me no lit- 
tle difficulty. It has been thoroughly and elaborately presented 



D. King, Sheet -13- 
by the examiner, and it is with the greatest hesitation that I 
find myself compelled to differ with his opinion. But in view of 
the fact that there is this difference between his opinion and 
mine, I feel that it is due to the applicant to give him the ben- \ 
efit of the doubt. 



mum 

3 0402 00266 9648